The Internet Commerce Association (ICA) is pleased to announce the release of the Initial Report of the WIPO-ICA UDRP Review Project Team, developed in collaboration with the World Intellectual Property Organization (WIPO).
The Initial Report is the result of a nearly year-long collaboration between WIPO and the ICA, co-led by Brian Beckham (WIPO) and Zak Muscovitch (ICA). It draws on insights from dozens of stakeholder consultations – including registrants, brand owners, panelists, counsel, registrars, and dispute resolution providers, scholars, and others – to assess the UDRP’s performance after 25 years and to identify areas where improvements can be made.
Learn More | Read the Report | Submit Your Feedback (Open Through June 27, 2025)
We hope you will enjoy this edition of the Digest (vol. 5.16) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Panel: Retroactive Bad Faith is a “Discredited Legal Theory”, No Renewal in Bad Faith (dreamstudio .com *with commentary)
‣ Panel: Impossible that in 2004, Argentinian Respondent Would Know that French Complainant Would Adopt Brand 14 Years Later (novagaming .com *with commentary)
‣ Did the Complainant Win This UDRP Without a Trademark? (cigarettesmokeremovalservices .com *with commentary)
‣ Panel: Complainant Abused the Process by Misleading Omission (seattlefoodtrucks .org *with commentary)
‣ Complainant Fails to Recover Lapsed Domain Name (sstowing .com *with commentary)
Panel: Retroactive Bad Faith is a “Discredited Legal Theory”, No Renewal in Bad Faith
NIMS – Stability AI Ltd v. Loren Heyns / DreamStudio, NAF Claim Number: FA2502002142063
<dreamstudio .com>
Panelist: Mr. Douglas M. Isenberg (Chair), Mr. Robert Badgley and Mr. Ho-Hyun Nahm
Brief Facts: The Complainant, founded in 2019, claims to be the world’s leading open-source generative AI company. In August 2022, it “unveiled its premier text-to-image consumer application DreamStudio, offering far more control and rapid generation”; and that “[w]ithin a few months of its launch, DreamStudio quickly grew to over 1 million registered users in over 50 countries.” The Complainant is the owner of two registrations for the mark DREAMSTUDIO, namely, UK registration (December 13, 2024) and EU registration (January 9, 2025). The disputed Domain Name was created on April 29, 2002. The Complainant argues that the disputed Domain Name appears to have been re-registered by the Respondent on an annual basis in April of every year, including in both April 2023 and April 2024.
The Complainant acknowledges “that the disputed Domain Name was first registered before the Complainant had trademark rights in the DREAMSTUDIO Marks” but adds that this “does not blankly preclude the Panel from finding bad faith under Policy 4(a)(iii)” because “Respondent re-registered the disputed Domain Name and changed the content of the resolving website to bear infringing content after becoming aware of the Complainant’s rights, which is sufficient to show bad faith use and registration.”
The Respondent argues that it has been providing “data-driven visual Projects” since 1997, and that the Complainant has been “providing dreamstudio .ai as an AI image generation service since 2023”; that the Respondent is “known as DreamStudio and DreamStudio .com in connection with a wide range of community-focused websites for government and nonprofits”. The Respondent provides evidence that it “was formed as an S-Corp in 1997 (initially DreamMaker Studios)” and that it “simplified the name from DreamStudio Interactive Inc… to DreamStudio when changing to an LLC in 2016.”
Held: The Panel notes that the Respondent was created in 1997, registered the disputed Domain Name in 2001 and offered services unrelated to those associated with the Complainant or the Complainant’s DREAMSTUDIO Trademark (neither of which existed in 1997 or 2001) for a number of years. While a corporate name registration is often irrelevant to a proceeding under the Policy, the Panel here finds the submitted documents, as well as the Respondent’s registration of the disputed Domain Name many years before the Complainant or its DREAMSTUDIO Trademark existed, quite applicable, see WIPO Overview 3.0, section 2.2. And proof that a respondent is commonly known by a domain name includes “articles of incorporation,” see WIPO Overview 3.0, section 2.3. Further, it seems obvious that the Respondent’s use of the disputed Domain Name recently may have caused a likelihood of confusion with the DREAMSTUDIO Trademark, the Policy clearly requires that a domain name “has been registered and is being used in bad faith.”
In this case, the disputed Domain Name was created on April 29, 2002, and the Complainant’s only two registrations for the DREAMSTUDIO Trademark were not issued until December 13, 2024, and January 9, 2025. The Complainant appears to recognize this weakness in its case and, accordingly, cites Developmentex .com, Incorporated v. Manuel Schraner, FA1755537 (Forum Nov. 27, 2017) for the proposition that “the respondent’s intentional abuse of complainant’s trademark rights for commercial gain discredits any notion that Policy 4(a)(iii) bad faith necessitates that there must be an existing trademark at the time an at-issue domain name is registered.” However, the Panel notes this decision is an outlier and inconsistent with most Policy decisions. A later panel in Toast, Inc. v. Jared Isaacman / Harbortouch [September 6, 2022, Steven M. Levy, Panelist] called it a “discredited legal theory.” This Panel concurs. The Panel found Complainant’s assertion quite surprising as “that line of reasoning has now been fundamentally disavowed (see, e.g., section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).” Hike Private Limited v. Perfect Privacy LLC / Zcapital, D2017-0902 (WIPO Aug. 25, 2017). In essence, Policy ¶ 2 is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon.
The Complainant also relies upon renewal of the disputed Domain Name in 2024 and 2025. However, as set forth in section 3.9 of WIPO Overview 3.0, and given that the record contains no indication that the registrant of the disputed Domain Name has changed in recent years, the Panel sees no reason to treat a simple renewal of the disputed Domain Name as a registration for purposes of bad faith. To be clear, the Panel expresses no opinion as to whether the Respondent’s use of the disputed Domain Name may be in bad faith (including by causing a likelihood of confusion with the DREAMSTUDIO Trademark), or whether an action by the Complainant in a court of law would be appropriate, only that the Policy requires registration in bad faith, which does not exist here.
Complaint Denied
Complainant’s Counsel: Caroline Y. Barbee of Kilpatrick Townsend & Stockton LLP, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Kudos to the Panel in this case for resolutely and clearly rejecting both the “discredited legal theory” of retroactive bad faith, and the equally discredited theory of “renewal in bad faith”. It must also be appreciated how the Panel clearly and unequivocally stated that Paragraph 2 “is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon”. Indeed.
It is unfortunate that these wrongheaded attempts to circumvent the Policy and well-established case law keep popping up occasionally, but Panels do themselves credit and protect the UDRP from subversion with unequivocal statements, like the Panel did here and in Toast, Inc., supra.
Moreover, as the Panel suggested, the Complainant may have a case in court for trademark infringement so is not without a potential remedy, however that is a separate issue from what the UDRP is intended to address.
I do wonder however, why RDNH was not considered in this case. The Complainant was represented by counsel and surely would have been aware or ought to have been aware of the futility of its case considering that it appears entirely premised on discredited legal theories. As I have long said, RDNH is a discretionary matter in the particular circumstances of the case, but where the facts demand that it at least be considered, it should be.
Nevertheless, this is an exceptionally strong and well written decision that everyone should read and appreciate. Indeed, I would say that the Panel’s strong position taken against the Complainant’s wrongheaded arguments more than makes up for not considering RDNH in the decision. Bravo to the Panel.
Panel: Impossible that in 2004, Argentinian Respondent Would Know that French Complainant Would Adopt Brand 14 Years Later
Mobility SAS v. Juan Videla, WIPO Case No. D2025-0774
<novagaming .com>
Panelist: Mr. Assen Alexiev
Brief Facts: The French Complainant, established in 2018, commenced offering NOVA GAMING-branded products related to office automation and gaming in 2021. The Complainant operates its official website at the domain name <novagaming .tech>, registered on July 30, 2024. The Complainant is the owner of two French trademarks for NOVA GAMING (word – registered on July 2, 2021) and NOVA GAMING (combined registered on October 15, 2021). The disputed Domain Name was registered on April 21, 2004 and displayed an error message. The Complainant alleges that the Respondent is not actively using the disputed Domain Name and is instead holding it for profit, which harms the legitimate owner of the NOVA GAMING trademark.
The Complainant further alleges that they cannot meet the Respondent’s minimum sale price and that Sedo’s technical setup prevents them from making an offer closer to the actual registration and maintenance costs of the domain. The Respondent points out that the disputed Domain Name was registered in 2004, which is 17 years before the Complainant registered its trademark in 2021. The Respondent further contends that the disputed Domain Name was not registered to harm or extort the Complainant, and adds that he had no prior knowledge of the Complainant’s company, that he has never contacted the Complainant to offer the disputed Domain Name for sale, and that he has never used the disputed Domain Name to promote products similar to those of the Complainant.
Held: The disputed Domain Name was registered in 2004, and the evidence submitted by the Complainant shows that the Complainant itself was established in 2018. In its own admission, it started using the NOVA GAMING trademark only in 2021. It is not possible that the Respondent, based in Argentina, may have known in 2004 that the Complainant would be established 14 years later in France, and that it would adopt the NOVA GAMING trademark three more years later. In such circumstances, the Respondent cannot have registered the disputed Domain Name in bad faith targeting the Complainant’s trademark. Since the Policy contains a cumulative requirement for registration and use of a domain name in bad faith, this necessarily means that its third element has not been established, and the Panel so finds.
RDNH: The Complainant is represented by counsel. It alleges that the disputed Domain Name was registered or acquired primarily to sell, rent, or otherwise transfer its registration to the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed Domain Name. The Complainant, however, makes this allegation without addressing at all the fact that the disputed Domain Name was registered many years before the Complainant and its trademark started to exist. It must have been evident to the Complainant and its counsel that, in such circumstances, it is unlikely for the Respondent to have targeted the Complainant with the registration of the disputed Domain Name, and that the Complaint cannot succeed.
Complaint Denied (RDNH)
Complainant’s Counsel: AMAR GOUSSU STAUB Selas, France
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: When a Complainant uses .tech and goes after the .com in a UDRP, one must immediately wonder why the Complainant never got the .com when it started its business. Of course, it usually means that the .com was already taken when the Complainant chose its brand at a later date and went ahead and adopted the brand anyhow – knowing that it was taken in .com. That is not the circumstances that the UDRP was intended to address. Indeed, that isn’t even cybersquatting. When the UDRP was first adopted in 1999, it was chiefly concerned with addressing the scourge of cybersquatters who targeted well known and existing brands before the trademark owner clued in that it needed or wanted its corresponding domain name. That is seldom the case these days. Today, most every company will get a corresponding domain name when they start up their company, leaving no opportunity for a cybersquatter to beat them to it.
Accordingly, the Panel strongly dismissed the Complaint in this case because as the Panel noted, “the disputed domain name was registered in 2004, and the evidence submitted by the Complainant shows that the Complainant itself was established in 2018” and had only “started using the NOVA GAMING trademark only in 2021”, thereby precluding any possibility of having “registered the Domain Name in bad faith targeting [of] the Complainant’s trademark”.
Notably, the Panel quite rightly pointed out that “the Complainant was represented by counsel” and that “it must have been evident to the Complainant and to its counsel that in such circumstances it is unlikely for the Respondent to have targeted the Complainant with the registration of the disputed domain name, and that the Complaint cannot succeed, yet “the Complainant [filed] the Complaint”. As the Panel to its credit and quite rightly found, this is RDNH in the circumstances.
How can we distinguish this case from the DreamStudio case above, where RDNH was not found? In the present case, the Panel noted that “the Complainant however makes this allegation [that the Respondent registered the Domain Name to sell to the Complainant] without addressing at all the fact that the disputed domain name was registered many years before the Complainant and its trademark started to exist”. In the aforementioned DreamStudio case however, the Complainant, also represented by counsel, argued retroactive bad faith and renewal in bad faith. So should the Complainant in DreamStudio deserve more credit and avoid RDNH because it relied upon discredited legal theories? I should think not. I think that in both cases RDNH was warranted.
Did the Complainant Win This UDRP Without a Trademark?
Steri-Clean, Inc. v. Tahseen Abdullah, NAF Claim Number: FA2503002146193
<cigarettesmokeremovalservices .com>
Panelist: Mr. Jonathan Agmon
Brief Facts: The Complainant is an Idaho corporation in the odor removal, cleanup, and cleaning services industry. The Complainant is the registered proprietor of trademark registration for CIGARETTE SMOKE REMOVAL and Design, registered on November 27, 2018, in the United States. The Complainant also claims common law trademark rights to CIGARETTE SMOKE REMOVAL. The Complainant owns and operates its Domain Name <cigarettesmokeremoval .com>, registered on June 30, 2016. The disputed Domain Name <cigarettesmokeremovalservices .com> was registered on September 28, 2024, and resolves to a website that clones the Complainant’s website and displays the Complainant’s trademark.
The Complainant alleges that the Respondent’s use of the disputed Domain Name to pass off as the Complainant does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Respondent is also scamming Complainant’s customers by using the disputed Domain Name and sending them false invoices. The Respondent contends that the disputed Domain Name was never publicly launched: Respondent’s website was in an early staging phase and was not indexed, advertised, or made accessible to the broader public, and there was no intent to impersonate or confuse. While references to the Complainant’s branding appeared on the Respondent’s website during the internal draft phase, it was strictly for layout or inspiration purposes, and the Respondent had no intention to pass off as the Complainant or associate his business with the Complainant.
Held: The Respondent has admitted that the disputed Domain Name was used internally and temporarily as a drafting tool during the development of a new web presence for our own service-based business. The Respondent also admitted that his website used the Complainant’s website, albeit for layout or inspiration purposes. The Respondent stated that the website was in an early staging phase and was not made accessible to the broader public, though the Complainant was able to provide a copy of said website to the Panel. In considering Policy 4(c)(iii), the Panel agrees with the Complainant’s assertion that the Respondent is not making a legitimate noncommercial or fair use of the domain name. The Panel notes that the Respondent has submitted no evidence to rebut the Complainant’s arguments. While the Respondent has not admitted wrongdoing, it is the finding of the Panel that the Respondent is not using the disputed Domain Name for any legitimate purpose.
Given that the Complainant’s trademark has been registered for many years, it is highly unlikely that the Respondent was unaware of the Complainant and its trademark prior to registering the disputed Domain Name. While the Respondent claims that he used the Complainant’s trademark as part of developing its own website, this cannot be reconciled with why the Respondent chose to incorporate the term “CIGARETTE SMOKE REMOVAL” into the disputed Domain Name and use Complainant’s website copy at the same time. The Respondent has made bare statements that there was no intent to impersonate or confuse Internet users, but has not provided any further explanation in respect of the choice of domain name, or why fake invoices were issued to the Complainant’s customers. The use of the disputed Domain Name to pass the Respondent as the Complainant is clearly evidence of bad faith registration and use.
Transfer
Complainant’s Counsel: Eric Perrott of Gerben Perrott PLLC, US
Respondent’s Counsel: Self-represented
Case Comment ICA General Counsel, Zak Muscovitch and Digest Editor, Ankur Raheja:
While the keywords in the disputed Domain Name might suggest that there was an intention on the part of the Respondent to use the disputed Domain Name in a descriptive sense, a review of web archives for the disputed Domain Name suggests that this was not the case. The archives show that the website at the disputed Domain Name was indeed copied from the Complainant’s official website at <cigarettesmokeremoval .com> including the registered logo, images and content (word by word).
Hence the Panelist observed that, “given the evidence presented to the Panel, including the use of the disputed domain name, the irresistible conclusion is that Respondent was well aware of Complainant’s trademark at the time of registration of the disputed domain name and sought to capitalize on Complainant’s goodwill and/or reputation, and impersonate Complainant to obtain pecuniary gain from Complainant’s customers.”
See: WIPO Overview 3,0, Section 2.13.1: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
But is that the end of the story? No, it is not. Before even looking at whether the Respondent had rights or a legitimate interest in the Domain Name and before even assessing whether the Respondent registered and used the Domain Name in bad faith, the Panel must determine whether the Complainant had trademark rights. The Panel found that the Complainant had a USPTO registered trademark and that the disputed Domain Name “contains Complainant’s CIGARETTE SMOKE REMOVAL trademark albeit with the addition of the term “services”. The Panel therefore found confusing similarity.
However, a closer look at the Complainant’s trademark tells a much different story. The Complainant’s trademark disclaimed the words “CIGARETTE SMOKE REMOVAL” apart from the mark as shown:
According to the WIPO Overview 3.0 at Section 1.10, where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), as is the case here, Panels may find that the Complainant’s trademark registration is insufficient by itself to support standing under the UDRP. Indeed, At Section 1.2.3, the Overview clearly states that “if the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms.”
UDRPPerspectives.org at 1.5 states that “the USPTO has indicated that “[t]he purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone and therefore do not function as a trademark.” UDRP Perspectives goes on to say that “where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the Complainant to provide additional evidence that the words have acquired a secondary meaning and, thus, status as a trademark as required by policy.
Notably, there is nothing in the decision about this issue whatsoever, let alone any reference to secondary meaning. In other words, the Complainant apparently had no demonstrated enforceable trademark rights in the terms corresponding to the Domain Name, yet was given credit for a trademark nonetheless. The Respondent may have engaged in copyright infringement or passing off, perhaps, but the Complainant should not have succeeded in this case absent trademark rights.
It is serious potential oversights like this that make it crucial for Panelists to review the actual trademark registration being relied upon. Moreover, any time that a Panel sees an obviously descriptive term claimed to be a trademark, either common law or registered, it is incumbent upon a Panelist to undertake closer examination.
Panel: Complainant Abused the Process by Misleading Omission
East Coast Renaissance, LLC v. 8 Socks, LLC, Nik Gandhy, WIPO Case No. D2025-0940
<seattlefoodtrucks .org>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant claims to be a local organization that has continually operated at <seattlefoodtruck .com> since 2011 and also owns and operates similar domain names, including: <seattlefoodtrucks .com> (registered August 5, 2010), <seattlefoodtrucks .net> (registered April 8, 2024), and more. The Complainant claims to have filed an application with the USPTO on May 14, 2024, to register the mark SEATTLE FOOD TRUCK .COM, claiming a March 2011 date of first use in commerce. The disputed Domain Name was registered on February 2, 2018, and as of March 25, 2025, the Respondent’s website promoted the “Best Food Trucks in Seattle”. Around the same time in March 2011, the Respondent registered 20 other domain names, all with the “.org” gTLD, pertaining to food trucks in specific (mostly urban) areas, such as <miamifoodtrucks .org>, <dallasfoodtrucks .org>, etc.
The Complainant adds that since 2011, the <seattlefoodtruck .com> has contributed to Seattle’s economic vitality by promoting local entrepreneurship and community connection. Further, the Complainant and its domain name are well-known and appear regularly in local news outlets promoting their partnerships and related engagements. The Respondent contends that the Complainant lacks protectable trademark rights, given the refusal of the USPTO to grant the Complainant’s trademark application and the lack of an evidentiary showing of acquired distinctiveness in the record of this case. The Respondent also contends that it has a legitimate interest in the Domain Name, which it uses in good faith as a descriptive term in conjunction with its overall business of providing information about food trucks in various locations.
Held: The Panel concludes that the Respondent has a legitimate interest in respect of the Domain Name. As argued by the Respondent and as addressed in the USPTO’s Nonfinal Office Action, the words “Seattle food trucks” (or “truck” in the singular) are largely descriptive, and hence more likely to be used legitimately by multiple parties. On this record, the Panel finds that the Respondent registered the Domain Name – simultaneously with 20 other domain names – for its descriptive quality, and not in order to trade off the purported fame of another party’s trademark. For several years after registering the Domain Name, the record shows that the Respondent has in fact been using the Domain Name to host a website offering services described by the words contained in the Domain Name. There is simply no reliable evidence of the Respondent targeting a trademark in this record. The Complainant has not established Policy paragraph 4(a)(ii). The Complaint fails.
RDNH: Nowhere in the Complaint or annexes thereto, was there a mention of the USPTO’s refusal of the Complainant’s trademark application. Although the USPTO’s refusal is, at this moment, non-final and the application is “currently pending”, the Panel finds it highly misleading to omit this information. As noted in Valhallan, LLC v. Casey Strattan, WIPO Case No. D2023-0977: “It is not the job of a UDRP complainant’s counsel to make out the respondent’s case for him, but a modicum of candor is required, particularly given the lack of discovery, cross-examination, and so forth in UDRP cases. The Complainant, represented by counsel, has abused this process by concealing the true status of the USPTO application. If there had been no Response filed in this action, the Panel would have been under the false impression that the USPTO application was sailing along smoothly, with no obstacles in its way.”
In many cases where an RDNH finding is made, it is because the complainant should have known that their complaint was doomed to fail, but pursued the case anyhow. In the instant case, the Panel makes no such finding, largely because the Respondent did not reply to the cease-and-desist letter. If the Respondent had replied to that letter and provided the information it furnished with the Response to this UDRP Complaint, then a “doomed to failure” RDNH finding may have been warranted. In sum, the Panel finds RDNH here based on the Complainant’s misleading omission about the status of its USPTO application.
Complaint Denied (RDNH)
Complainant’s Counsel: Lasher Holzapfel Sperry & Ebberson, U.S
Respondent’s Counsel: John Berryhill, Ph.D., Esq., U.S
Case Comment by ICA General Counsel, Zak Muscovitch: The Complainant in this case did not have any trademark right in the descriptive term, “Seattle Food Truck”, which puts it in the same position as the Complainant in the aforementioned, Cigarette Smoke Removal case. Fortunately in this case, the Respondent was well represented and brought this matter to the specific attention of the Panel, who found that it was “highly misleading to omit [the] information” about the USPTO’s refusal of the trademark application on the basis of descriptiveness. This was a well-deserved finding of RDNH in the circumstances and it is worth excerpting again, the Panel’s excellent reference to Valhallan, LLC v. Casey Strattan, WIPO Case No. D2023-0977 (Robert Badgley, Panelist):
“It is not the job of a UDRP complainant’s counsel to make out the respondent’s case for him, but a modicum of candor is required, particularly given the lack of discovery, cross-examination, and so forth in UDRP cases. Complainant, represented by counsel (indeed, the same counsel who received the USPTO refusal notice), has abused this process by concealing the true status of the USPTO application. If there had been no Response filed in this action, the Panel would have been under the false impression that the USPTO application was sailing along smoothly, with no obstacles in its way.”
Complainant Fails to Recover Lapsed Domain Name
S & S Towing Inc. v. Host Admin / SyncPoint, Inc., NAF Claim Number: FA2503002145226
<sstowing .com>
Panelist: Mr. Alan L. Limbury
Brief Facts: The Complainant has a pending trademark application with the USPTO for the mark S & S TOWING for “Vehicle towing”. The Complainant claims that its long-term, prominent use and promotion of the mark has made it well-recognised by consumers as identifying the Complainant as the source of the services. The Complainant further adds that it has operated a legitimate towing service since at least 2017 and lawfully owned the domain name <sstowing .com> since then. Due to an expired credit card, the domain name wasn’t renewed on time and was acquired by the Respondent in 2021. The Respondent contends that it acquired the domain name in 2021 after it expired, as it appealed to the Respondent because the term “SS” combined with “towing” is inherently descriptive and has generic commercial value, especially in the towing industry.
The Complainant alleges that the Respondent has no legitimate claim to the domain name, as the website currently linked to <sstowing .com> deceptively suggests an association with the Complainant’s towing business, while in reality, it redirects users to a WhatsApp contact for purchasing back the Domain Name. This tactic is a clear indication of cybersquatting, where a domain name is acquired solely to resell it at a higher price. The Respondent contends that it has rights or legitimate interests in the domain name, as domain names consisting of descriptive terms commonly used in an industry are routinely registered and held by domain investors. The Respondent further contends that it had never heard of the Complainant before this UDRP filing and that there is no evidence of any infringing use, imitation of the Complainant’s website, or misuse of their identity.
Held: The disputed Domain Name was registered by the Respondent on August 10, 2021, after its previous registration by the Complainant had expired. The word “towing” is descriptive and, as the Respondent has shown, many third parties operate under similar domain names combining the letters “ss” with “towing”. There is no evidence that the Respondent, in registering the descriptive domain name after it was dropped, had the Complainant in mind, nor that the Respondent has used the Domain Name in any way adverse to the Complainant. Under these circumstances, the Panel finds that the Complainant has failed to show the absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. Further, there is no evidence before the Panel to support any of the illustrative circumstances as set out in Paragraph 4(b) of the Policy, nor that the Respondent has acted otherwise in bad faith.
RDNH: The Complainant’s pending application to register the S & S TOWING mark with the USPTO was filed by the Complainant’s Counsel on March 13, 2025, the day before the filing of this Complaint. The Complaint does not claim the domain name is identical or confusingly similar to a trademark that the Complainant owns. Instead, it claims the domain name is identical or confusingly similar to the Complainant’s business name. On the evidence before the Panel, the Complainant had not established a reputation in its then non-existent mark when the Respondent registered the disputed Domain Name in 2021. The Panel considers that the Complainant, represented by Counsel, must have known that its Complaint should fail to establish rights in a mark at any time prior to the filing of this Complaint. The Panel, therefore, finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: Aaron M. Arce Stark of STARK LAW LLC, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: As the Panel rightly found, there is no trademark right in a merely pending application. (See for example; Horizon Publishing, LLC v. Opulence Communications Ltd., NAF Claim Number: FA1302001487500; “it is well settled that an application, without issuance, does not establish a Complainant’s trademark rights under the Policy”). Also see WIPO Overview 3.0 at 1.1.4; “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”.
Nevertheless, the Complainant could have claimed and proven common law trademark rights. After all, the Complainant had been using the mark since 2017 and could have therefore submitted evidence of the public’s identification of the Complainant with the brand, through advertising, media reports, sales volumes, etc. As the Panel noted, the Complainant however, failed to provide any evidence that through use, it had acquired common law trademark rights. Without any demonstrated trademark rights, the Panel correctly dismissed the Complaint.
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.