Domain Name News: November/December 2025

• Domain name industry news 
  • UDRP under the microscope
  • Nominet turns up the heat on winter fuel payment scams
  • Launch of new mobile-themed extension
  • Phishing, spam and malware still a threat despite October decline
• Domain name recuperation news     
  • Rumours of a transfer were denied
  • Descriptive Marks are PPProblematic
  • Driven to file a Response: Panel finds RDNH under UDRP

For earlier Anchovy News publications, please visit our Domain Names practice page. Learn more about Anchovy® - Global Domain Name and Internet Governance here.

Domain name industry news

UDRP under the microscope

The World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) along with the Internet Commerce Association (ICA) recently provided an update on the “WIPO-ICA UDRP Review”, pursuant to which a Project Team was convened to conduct a review of the UDRP (Uniform Domain Name Dispute Resolution Policy).

The update describes the review as a: “robust international process spanning nearly a dozen consultations with industry leaders and experts to identify best practices, consensus, and potential areas for improvement of the UDRP.”

Following public comment on an initial draft report, the Final Report is now being shared with various parties, including the Internet Corporation for Assigned Names and Numbers (ICANN) for consideration in any UDRP review undertaken by its Generic Names Supporting Organization (GNSO). 

Among the recommendations in the Final Report was one calling for ICANN to prepare and disseminate informational resources on the UDRP for registrars and for a contact person to be designated at each registrar for post-decision transfer procedures.  On a related note, the report recommended that ICANN facilitate “the creation and publication of educational material for use by all parties” in order to reduce the “frequency of poorly-conceived or unsubstantiated pleadings”.

In response to consistent calls from stakeholder groups for an appeals layer to be baked into the UDRP procedure, the Project Team was unanimous in its support of such an idea, but pointed out that “the vast majority of UDRP decisions are agreed to be solid and lacking in genuinely appealable aspects”.  It also set out the potential for abuse any such appeal procedure might entail and noted that “a range of interrelated procedural issues would need to be worked out” before any such appeals process could be implemented. 

Some of the other topics covered by the Report include the idea of true (i.e. permanent) cancellation of domain names pursuant to UDRP, the application of the UDRP to third-level domain names and the introduction of a fast-track UDRP similar to the Uniform Rapid Suspension System (URS). The report stated that all of these proposals would require further consideration.   

WIPO has stated that the overarching principle of the project was to “maintain the UDRP as an efficient and predictable out-of-court dispute resolution mechanism for clear trademark-based disputes.” It asserts that “by assisting the ICANN community in identifying areas of stakeholder agreement and disagreement, it is expected that ICANN’s review process will benefit from greater focus and efficiency.”

WIPO also points out that that the UDRP has proven to be “an effective process to quickly, consistently, efficiently, and predictably resolve clear cases of cybersquatting.”  It therefore asserts that “any recommendations should be borne out by a demonstrated compelling need for a change, and must be considered against this background, as any perceived case-specific or anecdotal faults of the UDRP do not warrant a wholesale revision of this industry best practice.”

Anchovy domain name team’s Jane Seager was a member of the Project Team along with a number of other experts and UDRP stakeholders from around the world.  Anchovy News will be watching for further developments. 

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Nominet turns up the heat on winter fuel payment scams

Nominet, the organisation responsible for managing the .UK namespace forthe United Kingdom, has identified a sharp rise in fraudulent websites set up to deceive those seeking information on the UK government’s Winter Fuel Payment.  As the colder months approach, it seems that criminals are increasingly exploiting public interest in the benefit to target vulnerable individuals online.

According to an update on the Nominet website, since August 2025, the Registry has suspended approximately 100 domain names linked to Winter Fuel Payment scams.  The sites in question were designed to appear legitimate, but were instead used in phishing schemes designed to capture personal information.  Although most eligible individuals automatically receive the UK Winter Fuel Payment, criminals hope to catch out those searching for guidance online.

The update points out that many of the suspicious domain names were intercepted early, thanks to Domain Watch, Nominet’s bespoke machine-learning tool.  The system flags domain names containing misleading or high-risk terms, enabling Nominet’s analysts to review and suspend abusive domain name registrations quickly.  Additional fraudulent domain names already active on the Internet were also taken down in partnership with registrars once reported and verified.

The Nominet article highlights some of the tactics frequently used in such scams, including ‘combosquatting’ - the practice of combining a trusted brand, government term, or recognisable phrase with additional words to create a deceptive sense of legitimacy.  Unlike traditional typo-squatting, these domain names do not rely on misspellings, making them harder for users to detect and easier for scammers to weaponise.  Some examples of suspended domain names include winter-subsidy-gov.uk, apply-subsidy-gov.uk and subsidies-payment-gov.uk.

Another common tactic the update covers is ‘typo-squatting’, where criminals imitate a trusted brand by introducing subtle misspellings or typographical errors into a domain name.  These changes are often so slight that it can be quite easy to recognise the familiar pattern and overlook the differences, making the site appear genuine at a glance.  Scammers rely on this instinctive recognition to exploit the trust users already have in a brand.  Unless a user examines the URL very carefully, it can be easy to mistake a typo-squatted domain name for the real website.

“Through our work, we’ve noticed scams like these are becoming more common and sophisticated – everyone must remain vigilant” said Paul Fletcher, CEO of Nominet.  “Make sure any emails are coming from a known source and that the message itself looks legitimate and reads like a professional email. Messages like this would never include requests for money or personal information.”  Fletcher also advised Internet users to always check the web address for anything that might not look right, such as a hyphen in a different place, or a typo they have tried to conceal.  “If you’re ever in doubt about a message you’ve received, open a new browser window and find the details to contact the organisation directly yourself”, he advised.

In its update, Nominet points out that since commencing operations with the .UK domain name Registry in 1996, it has overseen more than 10 million domain names and has worked closely with law enforcement and over 2,000 registrars to “ensure abuse is tackled on the .UK namespace“.  As online scams grow more sophisticated, Nominet’s proactive monitoring and partnerships across the cybersecurity and registrar ecosystem would appear to be producing measurable benefits.

For more information on .UK domain names, please contact David Taylor or Jane Seager.

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Launch of new mobile-themed extension

Almost twenty years after the launch of the generic Top Level Domain (gTLD) .MOBI, a new mobile-themed gTLD has just been introduced: .MOBILE. 

Marketed by the Registry Dish DBS Corporation as being “the new home for digital identities built for motion”, “perfect for mobile-first professionals, responsive websites, and apps that live in your pocket”, .MOBILE offers a modern alternative to .MOBI in a world where the smartphone has become our lifeline and billions of people access websites from their mobile devices.

The launch of .MOBILE is scheduled as follows:

• Sunrise Period: from 17 November to 17 December 2025

  During this period, trade mark holders who have registered their trade marks with the TradeMark Clearinghouse (TMCH) can apply for the corresponding domain names under .MOBILE.  It is a “Start Date” Sunrise, meaning that domain names are allocated on a first-come, first-served basis.

• Mobile Limited Registration Period (LRP): from 18 December 2025 to 3 February 2026

  According to the Registry’s website, “mobile customers get a head start with exclusive bundles, early registration access, and special pricing” during this phase.  These bundles include website builders, professional email services and discounts on premium domain names.

• Early Access Period (EAP): from 4 February to 18 February 2026

  During this period, available domain names may be registered by anyone on a first-come, first-served basis at a higher price.

• General Availability: from 19 February 2026 onwards

As from this date, anyone will be able to register available .MOBILE domain names on a first-come, first-served basis, at standard prices.

As .MOBILE domain names do not have any registration requirements and any entity can apply for them, trade mark owners are advised to secure their trade marks under this new extension before third parties can snap them up.

For more information on this launch or to register .MOBILE domain names, please contact David Taylor or Jane Seager.

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Phishing, spam and malware still a threat despite October decline

A recent report on cybercrime trends in the month of October 2025 by cybersecurity company Interisle Consulting Group, LLC has emphasised the need for continued vigilance in the face of a sustained threat from malicious activities such as phishing, spam and malware, while at the same time noting a decrease from the extremely high figures it reported for September. 

The company had previously documented a significant bump in the numbers for both phishing (an increase of 120% since August 2025 and 350% since September 2024) and spam (up 180% since August 2025 and 325% since September 2025) and, in comparison, October’s figures were more in line with general trends at 60% below those of September.  Nevertheless, the report points out that the numbers for phishing and spam were still close to 90% and 85% higher, respectively, when compared to October 2024.

The report also noted that a number of Top Level Domains (TLDs), including .BEST, .BEAUTY, .FIT and .QPON, had all showed a significant increase in their phishing domain score.

Interestingly, it also found that, despite the month-over-month drop in spam, legacy generic Top Level Domain (gTLD) .INFO grew over 50% in spam domains reported.  Additionally, new gTLDs .BEER, ,BOATS, and .HAIR each grew more than 100% in spam domain score.

With regard to malware activity, the report documents only a modest increase of 1% since September 2025; however, it states that the breakdown of malware types had evolved, with endpoint malware (targeting user devices) growing by 185% and Internet of Things (IoT) malware growing by 58%.  It also noted that both the .HELP and .ASIA TLDs showed a significant increase in malware domains.

Leaving aside monthly fluctuations, it is clear that the cybercrime landscape remains challenging and that the threat continues to escalate year upon year.  Continued investment in monitoring, user education, and defensive infrastructure will be vital as cyber threats grow more adaptive and persistent.

For further information, please contact David Taylor or Jane Seager.

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Domain name recuperation news

Rumours of a transfer were denied

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a UDRP Complaint for the disputed Domain Name rumoursatl.com.  The Panel found that the Domain Name had not been registered by the Respondent in bad faith as the Respondent registered the disputed Domain Name in 2016 in her capacity as a band member, with the knowledge and agreement of the Complainant. 

The Complainant, Rumours ATL, LLC, was a well-known tribute rock band based in Atlanta, Georgia, United States.  It performed the music of the well-known British-American band Fleetwood Mac.  The Complainant had used the stage name "Rumours ATL" since 2014, had given hundreds of concerts in the United States and internationally, and had a significant social media presence.  Therefore, the Complainant claimed unregistered trade mark rights in "Rumours ATL".

The Respondent was a former singer in the band, "Rumours ATL" and had registered the Domain Name on 15 January 2016, during her membership of the band.  At that time, the disputed Domain Name was used to host the primary website of "Rumours ATL".

In March 2025, the Respondent left the band and for a time after she left, the Domain Name redirected to a third-party website displaying content related to adult entertainment.  The Domain Name later resolved to registrar site indicating its availability for purchase for USD 3,000.

Finally, at the date the of the Decision, the disputed Domain Name resolved to a registrar site with pay-per-click ("PPC") links and a link to purchase the Domain Name.

To be successful in a complaint under the UDRP, a complainant must satisfy each of the following three requirements:

1. The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
2. The respondent has no rights or legitimate interests in respect of the domain name; and
   
   
3. The domain name has been registered and is being used in bad faith.

The Complainant argued that it had satisfied each of the elements under the UDRP, noting that it possessed unregistered trade mark rights in its "Rumours ATL" name based on its use of the name since the foundation of the band in 2014.  The Complainant added that the Domain Name was identical to the Complainant's RUMOURS ATL mark, in which the Complainant had invested significantly and which had acquired strong commercial distinctiveness as an indication of origin.  The Complainant argued that the Respondent had registered the Domain Name solely within her authority as a member of the band, but she was no longer affiliated with it and had not acquired any rights in the RUMOURS ATL mark. 

The Complainant also stated that when the Respondent left the band, the Complainant had requested the disputed Domain Name and the Respondent had claimed not to have control of it, which the Complainant believed to be untrue.  In addition, the Complainant claimed that the Respondent was aware of the Complainant's rights in the RUMOURS ATL mark at the time that she registered it as a band member and that her actions after leaving the band were tarnishing the Complainant's mark.  As a result, the Complainant argued that the Respondent was acting in bad faith, also noting her refusal to cooperate and use of a privacy shield to register the disputed Domain Name.

The Respondent did not reply to the Complainant's contentions.

In relation to the first element, the Panel found that the Complainant satisfied the first element of the UDRP because it had established unregistered rights in the RUMOURS ATL mark.  The Panel noted that the RUMOURS ATL mark demonstrated source-identifying capacity through its extensive use in commerce as a designation of source.  In addition, the record contained evidence that the mark had been in use since 2014, and that the Complainant had extensively performed under the RUMOURS ATL mark and had promoted it.

In relation to the second element, after reviewing the available record, the Panel found that the Complainant had established a prima facie case that the Respondent lacked rights or legitimate interests in the Domain Name and that the Respondent had not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name.  The Panel further noted that at the time of the Complaint, the Respondent was no longer a member of the Complainant's band and, after she left the band, the Domain Name had redirected to an adult-entertainment site and was later offered for sale for USD 3,000.

In relation to the third limb, the Panel agreed that the lack of cooperation of the Respondent after she left the band, together with redirection of the Domain Name to an adult-entertainment site and then subsequently offering it for sale, demonstrated evidence of the use of the Domain Name in bad faith.

However, the Panel highlighted that use in bad faith was not sufficient to establish the third element of the UDRP and that it was also necessary to prove registration in bad faith.  The Panel found that, in the present case, there was no evidence of registration in bad faith as even the Complainant itself had stated that the Respondent had registered the Domain Name back in 2016 in her capacity as a band member, with the knowledge and agreement of the Complainant.  In addition, the Panel noted that the Domain Name was used for nearly a decade for the Complainant's official band website and that the evidence did not indicate that the Respondent had registered the Domain Name with the intention of diverting Internet users away from the Complainant or in some way harming the Complainant several years later.

In light of the above, the Panel found that the third element had not been established and therefore the Complaint was denied.

This case underlines once again the cumulative nature of the third element of the UDRP.  The Panel expressly states that "Satisfying the third element of the UDRP requires showing both bad faith registration and use of the disputed domain name ".  The decision demonstrates that, even in cases where use in bad faith is established in a clear manner, registration in bad faith always needs to be shown for a complaint under the UDRP to be successful.

The decision is available here.

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Descriptive Marks are PPProblematic

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding that the Respondent had established rights or legitimate interests in it, particularly given the descriptive nature of the Complainant’s trade mark and the Respondent’s genuine use of the Domain Name for its descriptive purpose.

The Complainant, 12613212 Canada Inc., was a Canadian company that had been selling a kit for the treatment of “pearly penile papules” or “PPP” worldwide since 2020. It registered the domain name pppkit.com that same year and operated its business through the corresponding website. In 2022, the Complainant also obtained figurative trade marks, combining stylized graphic elements (a cube design featuring the letter “P” on three visible sides) with the word element “KIT,” in both Canada and the UK.

The Respondent, Leigh Coda of Cyvex Ltd, was based in the UK. In 2022, the Respondent registered the domain name pppkit.co.uk and subsequently contacted the Complainant regarding a potential distribution arrangement in the UK. Following a Nominet decision ordering the transfer of this domain name to the Complainant, the Respondent launched a business offering treatment kits for PPP under the name “PPP Clinic.” To this end, the Respondent operated the website at www.pppclinic.co.uk, titled “PPP Clinic – Life Changing Results,” through which similar PPP treatment kits were offered for sale.

The Domain Name ppptreatmentkit.com was registered by the Respondent in 2025 and resolved to a website containing content similar to that of the Respondent's website at www.pppclinic.co.uk, though with a slightly different layout.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:

(a)        The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b)        The respondent has no rights or legitimate interests in respect of the domain name; and

(c)        The domain name has been registered and is being used in bad faith.

With respect to the first limb, the Complainant argued that it not only owned figurative trade marks for “PPP Kit” but had also built up unregistered trade mark rights in “PPP Kit,” supported by over 150 customer reviews on its website and several Google Analytics reports demonstrating consumer recognition.

The Panel noted that the design elements of the Complainant's trade mark should be disregarded when assessing the first element, as such features cannot generally be represented in a domain name. The Panel also expressed reservations about whether the Complainant had established secondary meaning in the term "PPP Kit," given the limited evidence and the descriptive nature of the expression. Nevertheless, as the first element is primarily a standing requirement under the UDRP, the Panel concluded that the Domain Name, consisting of the Complainant's "PPP Kit" trade mark with the term "treatment" interposed between "PPP" and "KIT", was confusingly similar to the Complainant’s figurative trade mark. Accordingly, the first requirement was satisfied.

Regarding the second element, the Complainant argued that the website associated with the Domain Name impersonated or misled consumers into believing it was the Complainant’s own site. To support this contention, the Complainant provided a Google search for “PPP Kit,” which showed the Respondent’s website appearing on the second page of results, along with three emails from consumers who had either mistakenly contacted the Complainant about a purchase made on the Respondent’s PPP Clinic site or inquired whether the Complainant was affiliated with the Respondent’s “PPP Clinic.”

The Panel first observed that the three emails presented as evidence of confusion related only to the Respondent’s domain name pppclinic.co.uk, and not to the disputed Domain Name. It further noted that the expression “PPP treatment kit,” as used in the Domain Name, was descriptive of the product and that the Respondent was using it in connection with its descriptive meaning. In this context, the Panel found that the Respondent had rights or legitimate interests in the Domain Name, as it was used to direct users to a website selling PPP treatment kits. The Panel added that any reputation the Complainant may have developed in the expression “PPP Kit” could not alter this conclusion, absent proof that the term had acquired a secondary meaning, which was not established. Accordingly, the second element was not satisfied, and the Complaint was denied.

This decision highlights the challenges faced by brand owners whose trade marks consist of descriptive or semi-descriptive terms. Even genuine commercial use and a degree of market recognition may not result in a transfer under the UDRP when a respondent uses the same or similar terms descriptively, without any clear intent to target the complainant’s mark. By contrast, in the earlier Nominet decision, the transfer of the Respondent’s prior domain name pppkit.co.uk to the Complainant was ordered primarily because the domain name had been registered with the Complainant’s trade mark in mind, as evidenced by the Respondent’s subsequent approach seeking to become a distributor.

The decision is available here.

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Driven to file a Response: Panel finds RDNH under UDRP

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a three-member Panel denied a UDRP Complaint brought in relation to the disputed Domain Name drivendata.com (the "Domain Name").  The Panel found that the Complainant had failed to establish a lack of rights or legitimate interests under the second element of the Policy, and had also failed to prove registration and use in bad faith under the third element. The Panel made a clear finding of Reverse Domain Name Hijacking (RDNH) given that the Complainant had ignored established UDRP jurisprudence and put the Respondent to the unnecessary expense of filing a Response.  Somewhat unusually, the Panel also stated that the Complainant should consider voluntarily paying the Respondent’s costs.

The Complainant, DrivenData, Inc., was a Delaware corporation engaged in statistical and software services and the owner of the trade mark DRIVENDATA, registered in 2024 (with a first use in commerce claim in 2014) and the owner of the domain name drivendata.org (the "Complainant's domain name").

The Respondent was an individual who was a researcher and faculty member in information and data science who registered the Domain Name in October 2000 in connection with a potential startup in the driven-data area.  The disputed Domain Name had never been connected to an active website.

Before filing the Complaint on 7 June 2025, the Complainant attempted to acquire the Domain Name by contacting the Respondent at least seven times between 2014 and 2023.  The Respondent first said he was not interested in transferring the Domain Name, but the Complainant kept trying.  The Respondent did not reply to any of the subsequent inquiries.  In September 2024, the Complainant's counsel sent a letter to the Respondent notifying him that it had secured a trade mark for DRIVENDATA, asserted that the Respondent's "continual re-registration of the Domain Name is a false and misleading use of the Mark" and demanded the transfer of the disputed Domain Name to the Complainant. The Respondent replied, but the Complainant's counsel did not see the response because it had been intercepted by his spam filter. 

In his response, the Respondent explained that he had spent most of his research career working on statistical learning and data-driven algorithms, and that he registered the Domain Name while working with colleagues on a potential startup in this area, which he may still pursue, adding that the registration took place years before the Complainant registered, or even thought about, the trade  mark.  After the Complaint was filed, the Complainant's representative and the Respondent spoke by telephone.  During the call, the Complainant's representative explained that the Complaint was filed as a “last resort” because the Respondent had not replied to numerous messages over the years.

To succeed under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the Policy:

1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
2. The respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name was registered and is being used in bad faith.

The Complainant argued that the Domain Name was confusingly similar to its trade mark, citing instances where articles on data science mistakenly referenced the disputed Domain Name instead of the Complainant’s domain name.  The Complainant further claimed that the Respondent had no legitimate rights or interests in the Domain Name, as it had never been used in connection with an active website.

Additionally, the Complainant contended that the Respondent acted in bad faith by renewing the Domain Name after being made aware of the Complainant’s trade mark rights.  Specifically, a renewal occurred in January 2025, which was one year after the Complainant obtained its U.S. trade mark, three months after the Respondent received a formal demand letter, and more than ten years after initial contact from the Complainant regarding the Domain Name.  The Complainant argued that there were several indications of bad faith, including passive holding of the Domain Name without legitimate use, repeated renewals despite prior knowledge of the Complainant’s rights, conduct that obstructed the Complainant’s use of its trade mark online, and a refusal to engage in resolution efforts.

In its supplemental filing, the Complainant did not provide legal arguments to support its claim that renewal alone constituted bad faith registration.  Instead, it presented WhoIs records suggesting that the ownership of the Domain Name had transferred from an organization named “DM” to the individual Respondent sometime after July 2022, and therefore argued that this date was relevant for the assessment of bad faith registration.

The Respondent contended that the Complainant had not met all three criteria required under the Policy to justify a transfer of the disputed Domain Name. He stated that he originally registered the Domain Name in 2000, a decade before the Complainant acquired any trade mark rights.  The registration was made with the intention of using the Domain Name for a project he was developing, and he provided supporting documentation to the Panel.  The Respondent also denied ever transferring the Domain Name to another entity and asserted that he had maintained continuous and uninterrupted ownership of it since its original registration, with the intention of using it in the future.

On the first limb, the Panel agreed that the Complainant had established rights in the trade mark DRIVENDATA.  The Panel found that the Domain Name incorporated the Complainant’s trade mark in its entirety and was identical to it.  The Complainant therefore satisfied the requirements of paragraph 4(a)(i) of the Policy.  

On the second limb, the Panel found that the Complainant successfully made a prima facie case, thereby shifting the burden of production to the Respondent.  However, the Respondent rebutted this showing.  The Panel considered that there was no reason to doubt the Respondent’s statement in which he explained that he had spent most of his research career working on statistical learning and data-driven algorithms, and that he had registered the Domain Name while collaborating on a potential startup in that field.  The Panel found the Domain Name to be quasi-descriptive and consistent with the Respondent’s professional background and intentions.  Accordingly, the Panel concluded that the Complainant had failed to prove that the Respondent lacked rights or legitimate interests in the disputed Domain Name, and therefore the second element of the Policy was not established.

On the third limb, the Panel accepted the evidence provided by the Respondent, namely that he registered the disputed Domain Name nearly fourteen years before the Complainant began using drivendata.org and over twenty years before the Complainant filed a trade mark application.  The Panel did not accept the Complainant’s argument that the Respondent’s repeated renewals of the Domain Name should be treated as new registrations for the purpose of evaluating bad faith.

The Panel rejected the Complainant’s new argument, introduced in its supplement filing, that the Respondent had transferred the Domain Name to another entity, “DM.”  The Panel found that the evidence supported the conclusion that the Respondent had maintained uninterrupted ownership of the Domain Name since its original registration in 2000.

Furthermore, the Complainant’s own actions, such as sending multiple emails seeking negotiations and a formal letter to the Respondent, indicated that it had always believed that the Respondent retained ownership of the Domain Name.  Regarding the evidence of confusion between the disputed Domain Name and the Complainant’s domain name, the Panel found that this confusion resulted from the Complainant’s own decision to adopt a substantially identical domain name despite knowing the disputed Domain Name already existed.  Therefore, the Panel concluded that the Respondent had not registered the disputed Domain Name in bad faith and that the third element of the Policy had not been established.

Finally, the Panel found that the Complaint was filed in bad faith and amounted to an attempt at RDNH.  The Complainant had clear knowledge that the Respondent registered the disputed Domain Name long before the Complainant had acquired any trade mark rights. Despite this, the Complainant argued that the Respondent’s recent renewal of the Domain Name constituted bad faith registration, unreasonably disregarding well-established precedents outlined in the WIPO Overview 3.0.

The Panel also noted that the Complaint was filed after the Complainant had failed to acquire the disputed Domain Name through negotiation, without a valid legal basis.  In defending himself, the Respondent had to retrieve documentation dating back 25 years, not only to retain ownership of the Domain Name but also to protect his reputation against unfounded allegations of bad faith.  In the Panel’s opinion, the Respondent’s detailed response and decision to pay for a three-member panel reflected his commitment to keeping the Domain Name.

The Panel also noted that the Complainant also cited five cases from the year 2000 to support its arguments, ignoring the evolution of domain name jurisprudence over the past quarter of a century.  The Complainant also ignored key factors of the case and failed to address the full context where necessary, thus reinforcing the Panel’s conclusion that the proceeding was initiated in bad faith.

Unusually, the Panel emphasized that if the Policy allowed costs to be awarded to the prevailing Respondent, it would have considered doing so in this case.  Nevertheless, the Panel invited the Complainant to voluntarily cover the Respondent’s costs, given the exceptional circumstances of the case.

Comment:

The decision serves as a reminder that the UDRP is not a substitute for failed negotiations, and that trade mark holders cannot use it to override legitimate domain name registrations that predate their rights.  If legitimate registrants do not respond to contact attempts, the solution is not to file a UDRP complaint and unfairly put that registrant to the considerable cost and inconvenience of filing a response, but to focus on those negotiations, with the aim of reaching a material solution that both parties are happy with.

It is also notable that, while the Panel urged the Complainant to voluntarily consider paying the Respondent’s costs in this case, it expressly stated that it did not intend to endorse or advocate the addition of such a provision to the Policy, as this would present many difficult questions that the Panel had not considered.  In this regard the Panel cited the Initial Report of The WIPO-ICA UDRP Review Project Team, (April 17, 2025), available here. 

The decision is available here.

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Authored by the Anchovy News team.

Anchovy News editorial team:

• Laëtitia Arrault
• Sean Kelly         
• Ying Lou
• Cindy Mikul
• Eliza Parr
• Thomas Raudkivi
• Jane Seager
• David Taylor
• Tony Vitali
• Grace Wilshaw

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