In Oki Data, the Panel listed four factors, which if
proven, can demonstrate that a reseller or distributor is making a bona fide offering of goods and services
and thus has a legitimate interest in a domain name, namely:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that
the respondent is using the trademark in a domain name to bait consumers and then switch them to other
goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the
trademark owner of the ability to reflect its own mark in a domain name.
...The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users
to its website by creating likelihood of confusion with the Complainant’s trademark as to the source,
sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.
7. ...
2022-08-01 - Case Details
Thus, the view is that the burden of production shifts to the respondent to
come forward with evidence of a right or legitimate interest in the domain name, once the complainant has
made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Third Edition (“WIPO Overview 3.0”), section 2.1. ...Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation,
shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the
owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in
excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided
that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to
attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
respondent’s website or location or of a product or service on its website or location.
...
2022-03-24 - Case Details
These elements are:
(i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark in
which the Complainant has rights;
page 4
(ii) the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
...UDRP panels have explicitly held that, under paragraph 4(b)(iv) of the Policy, it will be evidence of bad faith
registration and use by a respondent if, by using the domain name, it has intentionally attempted to attract,
for commercial gain, Internet users to the websites or other online locations to which the domain name
resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations
to which the domain name resolves. ...
2022-02-25 - Case Details
Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that shall demonstrate a right or
legitimate interest:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved
based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of Paragraph 4(a)(ii):
https://www.wipo.int/amc/en/domains/search/text.jsp?...case=D2016-0510
page 6
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or
service on your web site or location.”
...
2022-12-19 - Case Details
Paragraph 4(b) of the Policy sets out four non-exhaustive examples of
circumstances which, if found by the Panel to be present, shall be evidence of the registration and use
of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of the documented out-of-pocket costs directly related to the
domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that the respondent
has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial
gain, Internet users to its website or other online location, by creating a likelihood of confusion with the
https://www.wipo.int/amc/en/domains/search/text.jsp?case=DIO2021-0019
https://www.wipo.int/amc/en/domains/search/text.jsp?...Bad faith can be found where a respondent “knew or should have known” of a complainant’s
trademark rights but nevertheless registered a particular domain name in which he had no rights or
legitimate interest (See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case
No. D2009-0320; The Gap, Inc. v. ...
2022-11-22 - Case Details
Accordingly, on the balance of the probabilities and in the interest of procedural efficiency, the Panel decides
that all named registrants of the disputed domain names are, in fact, the same entity and/or that all the
disputed domain names are under common control, and accepts consolidation as requested by the
Complainant.
...Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning
that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad
faith by creating confusion to the detriment of the Complainant by registering the disputed domain names
confusingly similar to the Mark, which can be considered as “cybersquatting”.
...
2022-10-31 - Case Details
This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. ...The Response includes evidence that he holds a significant number of such registrations.
The Respondent also says he has an interest in foreign languages and as a result he has registered a number of domain names for descriptive words in foreign languages. ...
2021-09-02 - Case Details
The addition of the added words in each of the disputed domain names does not lessen
the inevitable confusion between them and the Complainant’s BELFIUS trade mark.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the
disputed domain names. ...Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might
demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if
the respondent has been using the domain name in connection with a bona fide offering of goods and
services, if the respondent has been commonly known by the domain name, or if the respondent has been
making a legitimate noncommercial or fair use of the domain name.
...
2022-08-12 - Case Details
Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. ...Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
...
2021-06-02 - Case Details
This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. ...The Response falls short of what is required to demonstrate rights or a legitimate interest in the disputed domain name rebutting the prima facie case established by the Complainant.
Nor is it clear to the Panel how use of “citidirect” for a courier service in the face of “citipost” would qualify as good faith.
...
2021-06-15 - Case Details
Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad
faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of your documented out-of-pocket costs directly related to the
domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark
from reflecting the mark in a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your web site or other on-line location, by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or
location or of a product or service on your web site or location.
...He lists these domain names on a website at “www.beneko.com” which is prefaced with the
statement that “As always, we are open to business if you find anything of your interest among our digital
assets, brands and domain names”. A significant proportion of the domain names in the portfolio replicate
well-known trademarks – for example it contains domain names corresponding to “apple”, “asus”, “bose”,
“dell”, “delonghi”, “easyjet”, “Electrolux”, “Huawei”, “iphone”, “Lenovo”, “Motorola”, “Ryanair”, “Samsung”, and
“sonos”. ...
2023-02-07 - Case Details
Paragraph 4(b) of the Policy sets out four non-exhaustive examples of
circumstances which, if found by the Panel to be present, shall be evidence of the registration and use
of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of the documented out-of-pocket costs directly related to the
domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that the respondent
has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial
gain, Internet users to its website or other online location, by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s
website or location or of a product or service on its website or location.
...Bad faith can be found where a respondent “knew or should have known” of a complainant’s
trademark rights but nevertheless registered a particular domain name in which he had no rights or
legitimate interest (See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case
No. D2009-0320; The Gap, Inc. v. ...
2022-10-18 - Case Details
Indeed, the term “light”, while used by Complainant in connection with the
sale of lamps, is proposed to be used by Respondent in connection with low-calorie foods and products.
Therefore, there can be no confusion.
Under the second and third elements, Respondent states that, prior to receiving notification of the Complaint,
it was not aware of Complainant. ...Therefore, the
Panel does not admit it and shall not consider it in this Decision.
6.2 Substantive Issues
Under paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for Complainant to
establish:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is
recognized or established by the national law of a Member State and/or European Union law and; either
(ii) that the disputed domain name has been registered by Respondent without rights or legitimate interest in
the name; or
https://www.wipo.int/amc/en/domains/search/overview3.0/
https://www.wipo.int/amc/en/domains/search/overview3.0/
page 5
(iii) that the disputed domain name has been registered or is being used in bad faith.
...
2022-10-14 - Case Details
The Panel finds that Holder is involved in “cybersquatting” by registering domain names comprised of well-known marks without having any legitimate interest over them. This is evidenced in the following decisions: American Airlines, Inc. v. Privacy Protection / Yabani Eze, Sugarcane Internet Nigeria Limited,
WIPO Case No. ...Therefore, the Panel is convinced that the Holder registered the Disputed Domain Name to take unfair advantage of the reputation of the Petitioner ’s well-known trademark Grainger, and in so doing to disrupt the Petitioner’s business and to attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Petitioner’s trademark as to the source, sponsorship, affiliation, or endorsement.
On the basis of these facts and findings, it is for the Panel incontestable that the Disputed Domain Name was registered and is being used in bad faith.
7. ...
2021-12-03 - Case Details
Respondents [an ISP] and Complainant [a newspaper] are not competitors (so there is little or no likelihood of confusion).
Respondents have not been and will not be using to the domain names to misleadingly divert Complainants customers [if such misleadingness is possible between a dot com domain name and a national domain name at the first place].
...The Respondents have alleged that they have rights and legitimate interest in respect of the domain names. The Respondents have in this connection alleged that they have common law rights to the contested domain names. ...
2001-04-25 - Case Details
and/or
That due to the Complainant’s extensive reputation and goodwill, the Respondent intentionally registered the domain name in question to attract for, financial gain, Internet users to its website. It has done so by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website product or service.
...And, as has been said before, allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech. The overall test is one of impression of confusion in the mind of the person making the decision. See the New Zealand case of Polaroid Corporation v. ...
2000-10-13 - Case Details
page 4
Notably, the Complainant contends that:
- the Complainant is a worldwide provider of “global telecommunication and payment services”;
- the Complainant’s marks are well known;
- the disputed domain name long post-dates the Complainant’s trade marks;
- neither the Respondent nor any connected entity is commonly known by the disputed domain name
nor any corresponding name;
- passive holding of the disputed domain name does not constitute a bona fide offering of goods or
services nor a legitimate noncommercial or fair use, irrespective of past use;
- the disputed domain name has been registered and used in bad faith, irrespective of whether the
Respondent was the original holder;
- the Respondent registered or acquired the disputed domain name solely with the intention of selling it
to the Complainant or a competitor of the Complainant “or any third party”;
- the disputed domain name was originally registered by EIBV, which “ceased to exist” in 2002, whereas
an Archive.org screenshot (from 2021) shows that the website was most recently used by ECBV, a different
and unconnected entity located in a different city in the Netherlands, that was acquired by Canal+ in 2020,
and the disputed domain name was no longer used after that acquisition, demonstrating that the Respondent
registered the disputed domain name in order to sell it to a competitor of the Complainant;
- a contact of the Respondent “reached out” to the Complainant in early 2023 to sell the disputed
domain name;
- the Respondent intends to disrupt the Complainant’s business as it had no reason to register the
disputed domain name other than to obtain the most money from the highest bidder and the Respondent has
engaged in a pattern of such conduct in that (a) the nameserver for the domain name is at
and (b) it previously redirected to which was operated by the
Respondent, making it plausible that the Respondent previously owned and sold it to its
current owner, which is clearly using the domain name in bad faith – and the Respondent has thereby
acquired multiple domain names containing the trade marks to resell them for the highest possible amount,
so preventing the Complainant from reflecting its trade marks in the corresponding domain names;
- since it was sold, the domain name has resolved to a page containing links to third party
goods and services, creating a likelihood of confusion with the Complainant’s marks, and it is highly likely
that similar inadvertent use will arise in relation to the disputed domain name;
- any active use of the disputed domain name by the Respondent’s successor, Odido, in relation to
telecommunications services will infringe the Complainant’s trade marks;
- the Respondent “ceased to exist” more than two decades ago and has deliberately neglected to
update the ownership register of the disputed domain name in order to conceal its identity, thereby
obstructing the Complainant, which made multiple efforts through the Registrar to obtain the registrant's
contact details and ultimately had to initiate this proceeding to acquire accurate contact details; and
- the Complainant denies reverse domain name hijacking (in its supplemental filing) on the grounds that:
the disputed domain name was registered more than seven years after the Complainant registered its first
trade mark; the Complainant has extensively explained substantiated its assertion that the disputed domain
name was registered and used in bad faith: it is not the Complainant who is employing the UDRP as a
page 5
backup plan to obtain the disputed domain name but rather the Respondent acquired the disputed domain
name solely to sell it at the highest possible price, despite lacking any legitimate interest in it; and the
Complainant has never included incorrect information in its Complaint to mislead the Panel but has diligently
sought all pertinent information and presented it accurately to the best of its knowledge.
...- That the disputed domain name may in future be used to resolve to a page with links to third-party
goods and services that create a likelihood of confusion with the Complainant’s marks and/or to infringe the
Complainant’s marks. Such speculation is irrelevant to the question of whether the Respondent registered
the disputed domain name in bad faith 30 years ago (or indeed more recently). ...
2024-04-03 - Case Details
Notably, Respondent contends that:
- the disputed domain name is a highly common English dictionary word subject to tremendous third-
party use, which was registered by Respondent’s owner and its predecessors in interest in 1996 –
nearly two decades before Complainant existed;
- Complainant does not have enforceable trademark rights under the Policy, neither by virtue of its filing
for a Swedish business name in 2014, nor as a common law trademark; in particular, Complainant has
not presented evidence of a registered trademark for ROCKETSHIP in any jurisdiction;
- also, Google search results for “rocketship” show many third-party uses of the word in association with
schools, businesses, data companies, mobile or web applications, entertainers and more – none of the
results seem to show Complainant’s Swedish web development/hosting and mobile and web application
business;
- there’s no possible way Complainant can prove that Respondent targeted the non-existent Complainant
when it registered the disputed domain name in 1996, meaning more than 18 years before Complainant
was founded;
- rather Respondent purchased the disputed domain name because it was an available, generic
dictionary word generic Top-Level Domain (“gTLD”) “.com” domain name like the thousands of other
generic and highly valuable dictionary word domain names registered by Respondent in the late 1990s
and beyond; thus, Respondent registered the disputed domain name based on its meaning as a
common English dictionary word and not to target a trademark;
- Respondent has registered hundreds of mail-related domain names for its consumer email business,
many which are descriptive terms composed of common words combined with mail or post; also,
Respondent creates and develops businesses combined with its portfolio of strong generic domain
names, at times by founding the companies and building teams, and in other cases by forming
partnerships;
- there are currently 7,061 active users with “[…]@rocketship.com” email addresses;
- since the original registration and creation of the disputed domain name in 1996 (as noted in the
historical WhoIs records), Respondent’s CEO and owner, through his entities, has maintained
continuous unbroken ownership of the disputed domain name through the various corporate entities
which he controlled or owns, including Mail.com, offering users personalized email addresses at their
choices of hundreds of affinity domain names;
- the PPC advertising links that have appeared on the website under the disputed domain name were
auto-generated by the domain name parking service SmartName that hosts the disputed domain name
based on the contextual meaning of the latter or the Google algorithm, and were clearly not targeting
Complainant; SmartName shares the revenue earned from the domain names under its PPC services
with the domain name owners;
- while there are instances of abuse on any public email platform, the vast majority of users are engaged
in appropriate email use and behavior; in any event, Respondent does not control the users or create
email addresses in connection with the disputed domain name;
- when Respondent was contacted by Complainant on February 2, 2024, after having identified two
allegedly offending email addresses, Respondent replied to Complainant advising that Mail.com is the
provider of personalized email services in connection with the disputed domain name and that the
emails were not under the control of Respondent (i.e., that Respondent was not creating and sending
such emails) and that Mail.com’s abuse and take down polices could address any harm;
- Respondent via email connected Complainant with Mail.com and after an investigation conducted by
Mail.com, it found that only one of the two offending email addresses were real; according to the emails
provided, that email account was suspended for violating the email service’s terms and conditions; the
page 5
other email, according to Mail.com, was a “spoofed” email address which although it appeared to be
from an email user in connection with the disputed domain name , did not actually
come from the disputed domain name; therefore, there was nothing that could be done by either
Respondent or Mail.com, since the disputed domain name actually used was not under its control;
- despite the prior PPC links having no relationship to Complainant, out of courtesy and in good faith,
Respondent logged into the SmartName platform and changed the links to refer only to the descriptive
terms: “space”, “outer space”, “travel”, and “science”;
- since 1996, Respondent has responsibly owned the disputed domain name and acted in good faith at
all times; at no time has Respondent targeted the relatively newly created Complainant; and
- this type of filing is an abuse of the UDRP; by choosing to persist with this case after being placed on
notice and able to research and confirm the veracity of the situation, this is nothing more than a dubious
claim use the UDRP to wrest the highly coveted disputed domain name from its owner without paying
for the asset; given the rise of questionable claims brought by sophisticated businesses concerning
highly aged domain names, a finding of RDNH is important for the UDRP and domain owners to deter
future claims and abuses of the system.
6. ...Also, Complainant, besides pointing to the above mentioned regulations under Swedish law, asserts that a
Swedish trade name cannot be registered if there is a risk of confusion with a prior registered trademark or
trade name and that in the application process, an examiner conducts an ex officio assessment on, inter alia,
any risk of confusion. ...
2024-06-13 - Case Details
The second Respondent is an inventor, with a particular interest in locking devices, and has another business designing such devices.
The second Respondent’s inventive mind has turned to the issue of providing verifiable email communications. ...This is a test of side-by-side comparison, made objectively, and has nothing to do with how the Domain Name may be used in fact. Whether actual confusion may arise may be relevant in respect of the Respondents’ rights or legitimate interests or registration and use in bad faith, but it is irrelevant here. ...
2014-10-01 - Case Details
It was therefore not anticipated that the Respondent would claim that the prior ownership of the domain name which he sold for a substantial sum would confer upon him a legitimate interest in the Domain Names.
The acquisition of the domain name by the Complainant's predecessor in title is no bar against it succeeding under the Policy and is not evidence that this domain name was acquired in good faith by the Respondent.
...The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The Panel finds that the Domain Names 7 and 17 are identical with and the Domain Names 1-6, 8-16, 18-22 are confusingly similar to the INSTAGRAM trade mark for the purposes of the first requirement of paragraph 4(a) of the Policy. ...
2014-11-28 - Case Details