Decision

Summary: 

The majority of the Panel held that the disputed domain name is identical to the Complainant’s mark. The Respondent, represented by Cylaw Solutions, demonstrated a legitimate interest by lawfully acquiring the domain name, which is a Latin dictionary word “ignis” to mean “fire.” There was no evidence of bad faith registration or use by the Respondent, who is a domain name investor. Additionally, the offer to sell the domain was initiated by a third party platform brandbucket, not the Respondent himself.

The majority of the Panel, Mr. Brown and Ms. Braun, rejected the claim concerning Reverse Domain Name Hijacking (RDNH), explaining that although the complaint was weak, it was not brought in bad faith. The timing of the Respondent’s acquisition and the Complainant’s trademark registration gave some perceived credibility to the complaint. The complaint was viewed as an overreach or a long shot but not an abuse of the UDRP process.

In contrast, dissenting Panelist Mr. Gerald M. Levine dissented solely on the issue of RDNH, arguing that this case is a textbook example warranting a finding of RDNH. Levine noted several key points in his dissent:

First, several third party trademark holders for “Ignis” existed before the Complainant, including the previous domain registrant, Ignis, AS.

Second, the Respondent acquired the domain name <ignis.com> on September 6, 2022, before the Spanish and U.S. trademarks were applied for or registered by the Complainant, making it impossible for the Respondent to have anticipated the Complainant’s trademark application or rights.

Third, Levine emphasized that “Ignis” is a commonly used Latin dictionary word that cannot be exclusively claimed by any single trademark owner. It is not a coined or unique term, and many market users predate the Complainant.

Fourth, the Complainant was professionally represented by counsel who should have known there was no bad faith or cybersquatting involved. Levine pointed out that counsel’s certification that the complaint was complete and accurate violated UDRP Rule 3(xiii), and he considered the complaint objectively groundless and an abuse of process.

Levine also cited legal precedents supporting RDNH findings in cases where complaints lacked merit and complainants should have been aware of this factually and legally. In conclusion, Levine stated that the complaint was an abuse of the policy and should be sanctioned. He criticized the majority’s reluctance to find RDNH as misplaced, asserting that this case perfectly fits the circumstances when RDNH applies.

Complete decision reproduced below (source wipo.int): 

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ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION

Ignis Growth, S.L.U. v. Michael Bilde
WIPO Case No. D2025-1348

1. The Parties

The Complainant is Ignis Growth, S.L.U., Spain, represented by PONS IP, Spain.
The Respondent is Michael Bilde, Denmark, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <ignis.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2025. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on April 6, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Unknown Registry Domain ID: 3590508_DOMAIN_COMVRSN) and contact information in the Complaint.

The Center sent an email communication to the Complainant on April 14, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 15, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on April 25, 2025. In accordance with the Rules, paragraph 5,  the due date for Response was May 15, 2025. The Response was filed with the Center on May 13, 2025.

The Center appointed Lynda M. Braun, Gerald M. Levine, and Evan Brown as panelists in this matter on May 28, 2025. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is in the energy business. It owns the trademark IGNIS and several variations of that mark (e.g., IGNIS ENERGIA), for which it enjoys the benefits of registration in various jurisdictions around the world. For example, it owns United States of America Registration No. 7,603,899 for the mark IGNIS, registered on December 17, 2024.

According to the WhoIs records, the disputed domain name was registered on May 29, 1997. The
Complainant asserts that the Respondent acquired the disputed domain name on October 13, 2022. The
Respondent asserts that the disputed domain name was lawfully acquired on September 6, 2022. The
Respondent has used the disputed domain name to display a message that the disputed domain name is for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the
Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent asserts that the disputed domain name was lawfully acquired on September 6, 2022, prior to any trademark rights held by the Complainant in the standalone term “IGNIS” as part of a legitimate domain name investment strategy focused on acquiring meaningful, dictionary or Latin-derived words. The Respondent argues that “ignis” is a common Latin word meaning “fire,” used widely and descriptively by unrelated third parties, and that he neither knew of nor targeted the Complainant at the time of acquisition.

The Respondent denies any bad faith registration or use, maintaining that the disputed domain name was acquired without reference to the Complainant’s brand or rights, and that any subsequent offer for sale, including an unsolicited outreach by BrandBucket, does not invalidate the Respondent’s legitimate interest or constitute bad faith under the Policy. Accordingly, the Respondent contends that the Complaint is both legally and factually deficient under all three elements of the Policy and amounts to Reverse Domain Name Hijacking.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that the Complainant has satisfied the first element but not the second and third elements of the Policy.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7. The
standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward
comparison between the complainant’s trademark and the disputed domain name. Id. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. The Complainant has demonstrated its rights in the IGNIS mark by providing evidence of its trademark registrations. See WIPO Overview 3.0, section 1.2.1.

The disputed domain name incorporates the unaccompanied IGNIS mark in its entirety which – because the applicable Top-Level Domain (“TLD”) is disregarded under the first element – makes the disputed domain name identical to the Complainant’s IGNIS mark.

The Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant).

On this point, the Complainant asserts, among other things, that: (1) the Respondent is not commonly
known by the IGNIS mark, (2) the Respondent does not have any trademark rights in the IGNIS mark, (3) there is no relationship between the Complainant and the Respondent, and (4) the display of a website offering the disputed domain name for sale does not confer any rights or legitimate interests. Moreover, the Complainant highlights two unsolicited, high-value purchase offers made via BrandBucket (allegedly linked to the Respondent), directed at the Complainant in February 2025. The Complainant claims these offers demonstrate that the Respondent acquired the disputed domain name with knowledge of the Complainant’s trademarks and solely to extract financial gain from the Complainant by leveraging its brand identity.

The Panel finds that the Complainant has made a prima facie showing. However, the Respondent has
presented credible evidence in rebuttal, asserting that he acquired the disputed domain name as part of a
legitimate domain name investment strategy based on generic or Latin-derived terms, without knowledge of the Complainant. “Ignis” is a Latin word meaning “fire,” and the Respondent has shown it is a term used widely and descriptively by unrelated parties for various purposes.

The Panel accepts the Respondent’s explanation as plausible and consistent with legitimate domain name investment activity. The Complainant has not shown convincingly that the Respondent was targeting the Complainant’s mark or had reason to be aware of it at the time of acquisition. Nor is there persuasive evidence in the record to suggest the disputed domain name was acquired primarily for the purpose of selling it to the Complainant.

Accordingly, the Panel finds that the Complainant has not established this second element under the Policy.

C. Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith.

The Complainant contends that the Respondent acquired the disputed domain name in October 2022 with actual or constructive knowledge of its IGNIS trademarks and with the intent of profiting from those marks.

The Complainant also relies on two offers sent in February 2025 via BrandBucket proposing to sell the
domain for nearly USD 1 million.

However, the Panel notes that the Respondent has provided evidence that he acquired the disputed domain name on September 6, 2022, prior to the registration of any trademark rights in the standalone term “ignis” by the Complainant. While the Complainant does hold earlier registrations for composite marks (e.g., IGNIS ENERGIA), there is no compelling evidence that these marks had attained notoriety or widespread recognition (such as would support common law rights in the mark) at the time of the disputed domain name’s acquisition.

Moreover, and more significantly to the outcome of this case, the Respondent credibly asserts that it
purchased the disputed domain name based on its value as a Latin word, and not with the Complainant in mind. The disputed domain name consists of a common word with broad meaning across centuries and languages.

As for the purported targeting of the Complainant by the Respondent, the evidence tends to show that the offers to sell the disputed domain name to the Complainant were initiated by a third-party platform, not by the Respondent directly.

The Panel therefore accepts that the disputed domain name was acquired not for bad faith targeting of the Complainant but because of the disputed domain name’s intrinsic value as a generic or Latin term.
The Panel finds that the Complainant has not established this third element under the Policy.

7. Reverse Domain Name Hijacking

The Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”), asserting that the Complaint was brought in bad faith to deprive the Respondent of a domain name to which it has lawful rights.

The members of the Panel are divided on this issue. Two of the members reject a finding of RDNH, while
one member would find RDNH. See Circus Belgium v. Domain Administrator, Online Guru Inc., WIPO Case No. D2016-1208 (three member panel was split on the question of RDNH).

Under the Rules, paragraph 1, RDNH is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.

Majority Position (Panelists Brown and Braun)

While the Panel recognizes that the Complaint was ultimately without merit and rests on a weak factual and legal foundation, the majority of the Panel refrains from making a finding of RDNH in this instance. This is not because the Complaint is well-founded, but rather because the proximity in timing between the Respondent’s acquisition of the disputed domain name and the Complainant’s trademark registration may have offered a glimmer of perceived credibility to the Complainant’s case in the eyes of its counsel. Although speculative and tenuous, the assertion that the Respondent may have acquired the disputed domain name with some knowledge of the Complainant’s mark, given their near overlap, provides just enough context for the majority of the Panel to avoid a finding of RDNH. The majority of the Panel therefore views the Complaint as an overreach or a long shot, but not an abuse of the Policy.

Minority Position (Panelist Levine) Panelist Levine respectfully dissents from the majority’s conclusion solely on the issue of RDNH.

In this Panel member’s view, this is precisely the type of case where a finding of RDNH is warranted. First of all, there are many trademark holders other than the Complainant for the term “Ignis.” Indeed, the prior registrant who abandoned <ignis.com> appears to have been such a mark owner (Ignis, AS). TM View lists numerous Ignis expirations as well as registrations. Secondly, the Respondent’s registration of the disputed domain name which it acquired on a dropped auction (September 6, 2022) predated the application date for both the Spanish trademark (application date October 6, 2022, and registration issued on October 27, 2023) and the U.S. trademark (application date April 4, 2023, and registration issued on December 24, 2024). See WIPO Overview 3.0, sec. 3.8. Without divine intervention, the Respondent could not possibly have anticipated that a business operating in Spain was at that moment contemplating applying for a trademark registration.

I would also point out with double underscoring that the word “Ignis,” albeit in Latin, cannot be claimed exclusively by an owner who chooses that word for its mark, particularly where there are many other users that predated the Complainant in the market. Further, “Ignis” is no less a dictionary word because it may not appear in a standard English or Danish dictionary. Nor is Ignis in that category of words that anyone would describe as coined or uncommon as reflected by the many other market users.

Further, the Complainant was professionally represented. It should have been obvious to the professional representative that there could be no cybersquatting nor that the Respondent could conceivably have actual notice of the Complainant’s existence or of its plans. In this regard, the professional representative violated Rule 3(xiii) in certifying that to the best of its knowledge the information “is complete and accurate.”

Where the facts dictate sanction, it ought to be applied. See Pick Enterprises, Inc. v. Domains by Proxy,
LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555 (holding that “Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes ‘the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP’.”). Also Cyberbit Ltd. v. Mr. Kieran Ambrose, Cyberbit A/S, WIPO Case No. D2016-0126 (WIPO February 26, 2016) (“[T]he deficiencies [of proof] must have been obvious to anyone remotely familiar with the Policy”)

The majority of the Panel concluded its analysis by noting that although it “views the Complaint as an
overreach or a long shot, [it was] not an abuse of the Policy.” It is precisely because the Complaint is an
“overreach and a long shot” that RDNH is appropriate. The Complainant offered not even a shred of
evidence that the Respondent violated the UDRP.

It is for the above reasons that I respectfully disagree.

8. Decision

For the foregoing reasons, the Complaint is denied.
/Evan D. Brown/
Evan D. Brown
Presiding Panelist
/Lynda M. Braun/
Lynda M. Braun
Panelist
/Gerald M. Levine/
Gerald M. Levine
Panelist

Date: June 12, 2025

Case number: CAC-UDRP-107301
Domain names: indiraivf.com

Complainant: Indira IVF Hospital Pvt. Ltd.
Complainant representative: Ankur Raheja (UDRPKing.com, Cylaw Solutions)
Respondent: Saurav Shinde

Comments:  The disputed domain name, <indiraivf.com>, was stolen in October 2024 by an unknown party, although the website continued to operate normally. The loss of control over the domain was only discovered in January 2025 during audits related to an upcoming IPO. The registrant of the domain name was discovered to be an individual who self-identified as an “Ethical Hacker” on his LinkedIn profile. During the UDRP proceedings, the registrant claimed to have purchased the domain via Facebook for $20 along with another domain name, presenting related evidence. The website itself remained online throughout, apart from a two-day outage in March 2025.

This case highlights that a stolen domain name can be recovered using the summary procedure under the UDRP Policy. However, to proceed under the UDRP, the complainant must demonstrate ownership of a registered trademark or establish common law rights in the mark. If the stolen domain name consists of a common word and is not trademarked, the UDRP process may not be directly available. In such situations, the ICANN Transfer Dispute Resolution Policy (TDRP) offers an alternative method for recovering the domain name.

Identification Of Rights 
Indira IVF Hospital Private Limited (“Indira IVF” or “Complainant”) is the owner of various registrations for the trademarks INDIRA and INDIRA IVF in the market of India. Trademarks were registered as both a word and figurative marks in class 44 (‘Medical Services’) in the Trade Marks Registry of the Government of India. All the trademark registrations of the Complainant significantly predate the start of the Respondent’s take-over of the disputed domain name (October to December of 2024), inter alia, Indian trademark INDIRA (Indian Intellectual Property Office Appl. No. 2566949) applied on July 19, 2013 and registered on April 26, 2018.

Factual Background
The Complainant is India’s largest fertility service provider, operating over 150 centers and performing around 40,000 IVF cycles annually, with plans to expand significantly due to rising infertility rates. Established in 1988, it offers advanced reproductive treatments and is known for ethical practices, innovation, and a strong network of experienced specialists. Backed by EQT since 2023, the company is preparing for a $400 million IPO in 2025, potentially valuing it at around $2.5 billion. The Complainant enjoys a strong presence online also via its official social media platforms.

One of the Complainant’s shareholders registered the disputed domain name on 19 October 2010 and linked it with an official website of the Complainant until this dispute has started. The Complainant last paid for the renewal of the Domain Name for 5 years on August 28, 2024 and it was renewed till October 18, 2029. However, it was discovered in January 2025 that the disputed domain name was missing from the Complainant’s domain name control panel. Consequently, the Complainant’s representative reported the matter to the domain name provider, Global IT Providers, Jaipur. They notified the Complainant that the Complainant’s domain name control panel was accessed from an unfamiliar location in October 2024, and the domain name <indiraivf.com> was transferred away on October 31, 2024, without the Complainant’s authorization. The Complainant informed about the cyber incident to the Indian enforcement authorities.

The domain name service provider confirmed that the transfer was initiated by an IP address, which belonged to an unknown person from India. The service provider also informed that a notification was sent to the Complainant’s email, however, it may have gone unnoticed due to the large volume of emails received at that address. As a consequence, the domain name registrar has been changed to Hostinger. Finally, the registrar disclosed the underlying WHOIS information on 25 February 2025. As per the WHOIS data, the domain name registrant is located in Pusad, Maharashtra, India and his LinkedIn profile further discloses that the Respondent is an Ethical Hacker by profession. Nevertheless, the Company’s official website remained hosted on the disputed domain name, posing a significant risk of web sabotage.

Parties Contentions

The Complainant

The Complainant submits that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

The Complainant submits that it owns valid and long-standing trademark rights in INDIRA and INDIRA IVF, with trademark registrations dating back to 1988 and 2015, respectively. These marks have been extensively and continuously used in India for fertility services, making them well-recognized. The disputed domain name <indiraivf.com> contains the entirety of the Complainant’s registered trademark and is therefore considered identical or confusingly similar. The mere addition of the “.com” gTLD does not remove the confusing similarity between the domain name and the trademark. Accordingly, the first element of the Policy is satisfied, as the domain name clearly incorporates the recognizable portion of the Complainant’s mark.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as he is not affiliated with the Complainant and have never been authorized to use the trademark INDIRA or INDIRA IVF. The domain name was hijacked/stolen on October 31, 2024, through unauthorized transfer, and continues to host the Complainant’s original website content, creating a risk of misuse, phishing, and consumer deception. The Respondent, identified as an ethical hacker, is using the domain in a deceptive and unauthorized way, clearly not in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name, nor has any legitimate commercial or non-commercial justification to use it.

The Complainant asserts that the Respondent registered or acquired the domain name in bad faith, fully aware of the Complainant’s business and trademarks. The Respondent, based in the same region as the Complainant, transferred the domain to a different registrar without authorization and continues to control it despite lacking any connection to the Complainant. Evidence from the registrar and other online sources confirms the Respondent’s identity and shows a clear link between him and the hacked domain. The registration of a domain name confusingly similar to a well-known trademark, particularly when the Respondent had actual or constructive knowledge of the trademark, supports a finding of bad faith under the Policy. The circumstances suggest that the domain was taken over with the intention to exploit the Complainant’s goodwill and interfere with its online presence.

The continued use of the domain name by the Respondent amounts to bad faith, as it creates a false impression of affiliation with the Complainant. The Respondent has deliberately used the disputed domain to attract and mislead Internet users for commercial gain, by creating confusion regarding the source and legitimacy of the website. The website hosted at the disputed domain still displays the Complainant’s content, indicating an intention to impersonate the Complainant and benefit from its established reputation. This deceptive conduct poses a serious risk of reputational harm, customer diversion, and phishing attacks. The use of privacy protection services by the Respondent further indicates bad faith by attempting to conceal identity and evade accountability. Such opportunistic exploitation and impersonation demonstrate a clear intent to profit from confusion and fulfil the criteria of bad faith use under the Policy.

After the Response was filed by the Respondent, the Complainant provided its additional contentions. Therein, the Complainant argues that the Respondent’s explanation for acquiring the domain <indiraivf.com> is unconvincing, as the sale via Telegram lacks credibility and the Respondent is suspected to be the hacker or affiliated with the hacking group. The Complainant highlights that the Respondent paid a suspiciously low price for two domains, one of which was linked to the original registrar of the Complainant’s domain, suggesting unauthorized access at the reseller level. Despite the Respondent’s claim of ignorance, the Complainant asserts that the Respondent had actual knowledge of the brand’s strong reputation, given its public online presence and celebrity association. The disputed domain name was suspended due to abuse reports, indicating malicious use, and the Complainant had to intervene to restore access to their official website to prevent reputational and business damage. These additional submissions aim to reinforce the claims of bad faith registration and use, and to support the request for the domain name to be transferred back to the Complainant.

The Respondent

The Respondent provided the Response in which he claims that on October 26, 2024, he purchased the disputed domain name through a peer-to-peer (P2P) transaction after finding a post in a Facebook group. He expressed interest in buying this domain name due to its high traffic and proceeded with the deal via Telegram. He states that he transferred the payment to the seller, who then provided the authorization code to transfer the domain. The Respondent asserts that he has all the proof of the transaction, including details of the person from whom he bought the domain and where the money was sent. He adds that he is now unsure about what is happening and does not know what to do next.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

No Rights or Legitimate Interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

Bad Faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Principal Reasons for the Decision
The Panel agrees with the Complainant that the disputed domain name is identical to the Complainant’s trademark INDIRA IVF.

The Panel acknowledges that the Complainant presented prima facie evidence that the Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, the Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademarks in any manner, including in domain names. The Respondent’s name does not resemble the disputed domain name in any manner. Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.

The Respondent did not challenge in his response the evidence that was presented by the Complainant, therefore, the Panel concludes that the Respondent meant Complainant’s trademarks INDIRA IVF when he took over the registration of the disputed domain name (see WIPO Overview 3.0, para. 3.1.1). Previous UDRP panels categorically held that the use of a domain name for illegal activity, including the unauthorized account access/hacking, impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, para. 2.13.1). The Respondent’s claim that the disputed domain name was allegedly purchased via a Facebook group does not negate the fact that this domain name was acquired as a result of the Complainant’s domain names‘ management account being previously hacked. Based on the general legal principle that no right can arise from illegality (ex injuria jus non oritur), the Respondent’s explanation cannot absolve him of liability for the unlawful acquisition of the disputed domain name.

Previous UDRP panels have already established that redirecting the disputed domain name back to the Complainant’s website is also the evidence that supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark (section 3.1.4 of WIPO Overview 3.0). In addition, the Respondent himself has confirmed in his response that the reason he was interested in buying the disputed domain name was in its high traffic. Previous UDRP Panels have also found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant (section 3.1.4 of WIPO Overview 3.0). This threat finally turned into real damages for the Complainant when the take-over of the disputed domain name resulted in the short suspension of the Complainant‘s website for several hours which forced the Complainant to intervene and restore access to its official website in order to prevent reputational and business damage.

Therefore, the Panel came to the conclusion that the Respondent both registered (i.e. took-over the registration) and used the disputed domain name in bad faith.

For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
indiraivf.com: Transferred 

PANELLISTS

Name Darius Sauliūnas
Date of Panel Decision
2025-04-24

Decision Online at: https://udrp.adr.eu/decisions/detail?id=680f3dd84481433a9c0ea212

ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION

ICIM International S.r.l. v. Agrinoon (Hong Kong) Limited
Case No. D2025-0251

1. The Parties
The Complainant is ICIM International S.r.l., Italy, represented by Orsingher Ortu, Italy.
The Respondent is Agrinoon (Hong Kong) Limited, Hong Kong, China, represented by Archer Softech, India.

2. The Domain Name and Registrar
The disputed domain name <bionike.com> is registered with Paimi Inc. (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2025. On January 23, 2025, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain name. On February 6, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent (REDACTED FOR PRIVACY, Privacy service provided by Paimi Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 14, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2025. The Response was filed with the Center on March 7, 2025.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 17, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On March 17, 2025, the Complainant made an unsolicited supplemental filing with the Center. On March 24, 2025, the Respondent made an unsolicited supplemental filing with the Center.

4. Factual Background
The Complainant is an Italian pharmaceutical company founded in the 1930s that became part of the Sodalis Group in 2019. The Complainant owns an Italian cosmetic brand called “BioNike” (formed from the Greek “Bio” meaning “life” and “Nike” meaning “victory”). The Complainant holds several trademarks, including the following:

– Italian trademark registration number 186089 for BIONIKE in a fancy script, registered on November 8, 1966, specifying goods in classes 3 and 5, most recently renewed under number 362022000155409 from March 10, 2023; and
– Italian trademark registration number 302016000046939 for BIONIKE SALUTE E BELLESSERE and device, registered on July 6, 2017, specifying goods in classes 3 and 5.

The Complainant also uses the domain name <bionike.it>, registered on October 17, 2000, in connection with a website that prominently displays the BIONIKE SALUTE E BELLESSERE and device mark and provides information about the Complainant and its products. The Complainant appointed a Hong Kong, China company as its online distributor in China on April 28, 2020.

The Respondent is a Hong Kong, China agricultural company formed in 1996 that specializes in the manufacture of agrochemicals and fertilizers. It holds several trademarks, including Chinese trademark registration number 59740499 for BIONIKE, registered on May 28, 2022, specifying goods in class 1, such as agricultural chemicals other than fungicides, herbicides, insecticides, and parasiticides.

The disputed domain name was registered on January 31, 2019. It formerly resolved to a “coming soon” webpage but was transferred to the nameservers of a hosting provider on August 21, 2023. On September 30, 2024, the Complainant sent a takedown notice to the hosting provider, who determined that the disputed domain name was infringing the intellectual property rights of the Complainant and proceeded to disable parking-related services for it. The hosting provider later confirmed that it parked domain names with basic Pay-Per-Click (“PPC”) style advertisements to monetize unused or undeveloped domain names, such as the disputed domain name. Subsequently, the disputed domain name has been passively held.

5. Parties’ Contentions

A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is identical to its BIONIKE mark and confusingly similar to other marks that it holds containing the term “BioNike”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use the disputed domain name in connection with an offering of goods or services.

The disputed domain name resolved to a landing page displaying PPC links related to cosmetics and dietary supplements and redirecting to several links of pharmacies and manufacturers and/or distributors of such products, including seven competitors of the Complainant. A legitimate interest cannot reasonably be based on the Respondent’s Chinese trademark registration for BIONIKE, which was only registered in 2022 in respect of goods in class 1, not cosmetics in classes 3 and 5 that were the subject of the PPC links. The hosting provider confirmed that the Respondent infringed the Complainant’s rights. The Respondent has not been commonly known by the disputed domain name.

There is no evidence that the Respondent is currently making a legitimate non-commercial or fair use of the disputed domain name. The Complainant submits that the evidence in the Response is in no way sufficient to show preparations to use the disputed domain name. There is no trace anywhere online of the Respondent’s BIONIKE chemical. The only proof consists of a single, non-publicly available photograph and an invoice dated June 4, 2024. The disputed domain name has resolved to an “under construction” page for 5 years. Further, the Complainant’s brand is also known in Africa, where a client of the Respondent is located. According to evidence presented by the Complainant, during the period 2019 to 2024 the Respondent registered eight different trademarks in China, four of which correspond to third-party brands, i.e., BIONIKE, FLY TOP, TOP CHEF, and UBALL. There is no evidence on the Internet that the Respondent has ever used these marks. Meanwhile, the corresponding domain names <flytop.com> and <uball.com> are used in the same way as the disputed domain name to resolve to PPC links landing pages hosted by the same provider and formatted in the same way. The registrant information is privacy-protected.

The disputed domain name has been registered and is being used in bad faith. It was registered long after the Complainant obtained its first BIONIKE trademark registration. Given that the BIONIKE trademarks and domain name were widely used in connection with the Complainant’s business long before 2019, it is very likely that the Respondent was aware of both distinctive signs at the time of registration of the disputed domain name. The Complainant holds a well-established and recognized position internationally, as it distributes its products in 46 foreign countries also through e-commerce platforms. It issued two invoices for product to a client in Hong Kong, China in 2012. The Complainant is active in Asia by promoting and selling BIONIKE-branded products by means of various local social media channels and e-commerce platforms as managed by local distributors, including the RedNote social media platform in China. The disputed domain name resolved to a landing page displaying PPC links to sites for products in competition with those of the Complainant, diverting traffic from the Complainant’s website and unlawfully exploiting the Complainant’s reputation and goodwill in its BIONIKE trademarks. The Complainant did not take any screenshots before starting the takedown procedure, as it relied in good faith on the sufficiency of the positive response from the hosting provider.

There is no evidence that the change of nameservers was accidental. All responsibility for the content hosted on the webpage lies with the user. Further, the Respondent has tried to mask its identity during the registration procedure. The Respondent has engaged in a practice of registering Chinese trademarks corresponding to domain names with parking pages. The Complainant’s BIONIKE products were offered for sale in China via e-commerce platforms long before 2019 and entered the Chinese market through a local distribution network before the Respondent registered its Chinese trademark for BIONIKE.
The request for a finding of Reverse Domain Name Hijacking is unfounded. The Complainant believes it can succeed and has always given a clear and fair interpretation of all facts available. The Complainant’s good intentions were also shown by its attempt to contact the Respondent in order to avoid unnecessary costs.

B. Respondent

The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name and that this dispute falls outside the scope of the Policy.
The Respondent replies to the Complainant’s allegations as follows: the Complainant owns rights to stylized marks, not a word mark, and overall the Complainant argues that it is known and has registered trademark rights in the region of Italy only. If the Complainant started operating in China in 2020, the supporting evidence only shows that it has used the BIONIKE SALUTE E BELLESSERE and device mark that that it appointed its Chinese distributor after the registration of the disputed domain name, which was in any case an internal matter not within the knowledge of the Respondent. The Complainant did not make its first post on RedNote until 2024. The Respondent denies ownership of any domain names corresponding to the trademarks FLYTOP, TOP CHEF, or UBALL. The domain name <topchef.com> did not resolve to PPC links in 2024 but to an Indian restaurant. Even if the other two domain names used the same hosting provider, that does not confirm ownership by the same registrant. The Chinese registered trademarks are combinations of common English words with numerous trademark owners, any of whom could own the corresponding domain names. The Respondent is an investment company with multiple subsidiaries and investments across various industries, so it is unsurprising that the Respondent owns several trademarks. The Respondent does not admit ownership of the domain names corresponding to these trademarks. The disputed domain name has never been put on sale but pointed to a “coming soon” page until August 2023. The nameservers were changed by the hosting company in August 2023 by accident without the knowledge of the Respondent, who does not know exactly what appeared on the landing page from that point, as there is no evidence on record of infringing links.
The Respondent acknowledges that the Complainant holds registered trademark rights in Italy only, which afford standing, but submits that the Complaint fails on the other elements of the Policy.

The Respondent does have rights and a legitimate interest in the disputed domain name. The Respondent was first in time to register the disputed domain name, as it is comprised of common words. The Respondent owns a matching trademark in China. The disputed domain name reflects the Respondent’s corporate objectives related to bio-based agrochemicals. The Respondent has used the trademark to export a chemical to an African company. This all goes to show demonstrable preparations to use the disputed domain name before notice of the dispute. The Respondent was subject to a three-year COVID lockdown that significantly affected its business plans. The Respondent’s BIONIKE chemical product is typically supplied to specialized agrochemical companies rather than directly to end consumers. Therefore, the Respondent does not rely on social media or Internet promotions for this product. The UDRP process is not a court or forum to decide civil disputes or any kind of trademark rights between the Parties. The UDRP is designed to deal with cases of pure cybersquatting, not disputes between parties with competing rights acting in good faith. The Complainant did not place in evidence any screenshot of a PPC parking page associated with the disputed domain name. There is no such page in the Internet archive. The Respondent did not infringe the Complainant’s rights. In any case, PPC links are dynamic and reflect an Internet user’s previous searches results.

The disputed domain name was neither registered nor used in bad faith. There is simply no evidence whatsoever to support the Complainant’s limited contention that the disputed domain name was registered in 2019 because of the Complainant. The evidence convincingly demonstrates that BIONIKE is being used in the Respondent’s business of biochemicals. There is no evidence that the Respondent was aware or ought to have been aware of the Complainant’s mark at the time of registration of the disputed domain name. The Respondent registered the disputed domain name as a combination of widely-used terms: “bio” is about biochemistry and sounds like “拜” while “nike” is a transliteration of “你克”. The combination means “I entrust you to control pests” (拜你克). Similar terms are used in the chemical industry. The same domain name is available in different country code Top-Level Domains (“ccTLDs”). The United States military has used “NIKE M Magnesium Chloride” where “NIKE” refers to missile systems. There is no place to find that the Respondent had constructive knowledge of the Complainant’s Italian trademark registrations. The Respondent declares that it did not know of the Complainant or its brand when it registered the disputed domain name in 2019. There is no evidence of any infringing PPC links or bad faith use. Use of a privacy service is not ipso facto evidence of bad faith.
The Respondent asks the Panel to declare that the Complaint constitutes an attempt at Reverse Domain Name Hijacking. Initiation of the proceeding has put the Parties to considerable time and cost. The claim is baseless. The Complainant has taken no action against “bionike” domain names in other TLDs but is attempting to upgrade to the “.com” TLD via a UDRP proceeding. The Complainant concealed the date of its first post on the RedNote social media platform.

6. Discussion and Findings

6.1. Unsolicited Supplemental Filings

The Complainant made an unsolicited supplemental filing on the day on which the Panel was appointed, March 17, 2025. The Respondent made an unsolicited supplemental filing a week later, on March 24, 2025.

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” while paragraph 10(d) provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.

In the present case, the Complainant seeks to justify admission of its supplemental filing on the basis of (i) exceptional circumstances regarding certain evidence in the Response; (ii) the alleged unfoundedness of certain allegations in the Response; and (iii) the request for a finding of Reverse Domain Name Hijacking. The Respondent objects to admission of the Complainant’s supplemental filing on the grounds that there are no exceptional circumstances that would warrant its acceptance.
The Panel observes that parts of the Complainant’s supplemental filing do merely reiterate arguments or seek to provide further evidence that could have been filed earlier. However, the Panel also notes that it provides comments on evidence in the Response regarding use of the Respondent’s BIONIKE mark, that could not have been anticipated at the time when the Complaint was filed. In these exceptional circumstances, the Panel will accept the supplemental filing so that the Complainant has a fair opportunity to present its case. Given that the Respondent has taken the opportunity to reply to the supplemental filing, this will not cause unfairness to either Party.
Therefore, the Panel exercises its discretion to admit both Parties’ supplemental filings and will take them into account according to their relevance, materiality, and weight.

6.2. Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proof of each element is borne by the Complainant. Failure to prove any one element will result in denial of the Complaint.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a BIONIKE trademark for the purposes of the Policy. As the figurative elements of the mark cannot be reflected in a domain name for technical reasons, the Panel will not take them into account in the comparison with the disputed domain name. See WIPO Overview 3.0, sections 1.2.1 and 1.10.

The mark is reproduced within the disputed domain name. The only additional element is a generic TLD extension (“.com”) which, as a standard requirement of domain name registration, may be disregarded in the assessment of confusing similarity for the purposes of the Policy. See WIPO Overview 3.0, sections 1.7 and 1.11.1.

Therefore, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests, Bad Faith, and the Scope of the Policy

The disputed domain name was evidently used in connection with a PPC links landing page until the Complainant initiated a takedown procedure with the hosting provider. As the registrant, the Respondent was responsible for the use made of the disputed domain name. However, while the Complainant alleges that the PPC links related to certain types of products and linked to the websites of its competitors, this allegation is not substantiated. The disputed domain name is now passively held.

The Respondent holds a trademark registration for BIONIKE, which is identical to the disputed domain name. The Panel considers that a respondent’s trademark rights would ordinarily support a finding that it has rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.12.1. At the same time, trademark rights do not automatically confer rights or legitimate interests on a respondent for the purposes of the Policy where, for example, the overall circumstances demonstrate that the trademark was obtained primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights, even if only in China. See WIPO Overview 3.0, section 2.12.2.

In the present case, the Respondent’s trademark registration is valid in the jurisdiction where the Respondent is based (i.e., China) and the registration specifies products related to the Respondent’s business in general (i.e., agricultural chemicals in class 1). The Respondent did not apply for the trademark until two years after it registered the disputed domain name and it provides no evidence that it has used the BIONIKE mark with respect to the goods specified in the registration even now, three years after it obtained the trademark registration. The evidence of use of the mark refers to a fungicide, which is excluded from the goods specification in the Respondent’s trademark registration. That evidence consists of a photograph and a computer printout of a bill of lading. The photograph shows part of a bottle label marked with a generic chemical description in large font and, on the side, a small BIONIKE logo above the mark of an Egyptian chemical company. The bill of lading is dated June 4, 2024, and refers to BIONIKE Difen-Azoxy, which may correspond to the chemical description on the label. The shipment of 900 cartons was sent by the Respondent to a logistics company in Djibouti. There is no online or other evidence on the record of the existence of this BIONIKE fungicide. It is difficult for the Panel to verify this limited evidence.

The Complainant presents evidence intended to show that the Respondent’s BIONIKE trademark forms part of a pattern of trademark registrations to circumvent the application of the Policy. It found three others identical to third party trademarks and no evidence of their use by the Respondent. Two of them correspond to domain names (<flytop.com> and <uball.com>) that resolve to PPC links landing pages hosted by the same provider as was the disputed domain name in 2023-24. However, there is no evidence that these other domain names are registered by the Respondent nor that the PPC links capitalize on the third-party trademarks.

The disputed domain name was registered in 2019, years after the Complainant’s earliest BIONIKE trademark registration. The Complainant used its mark online in its domain name for many years before the registration of the disputed domain name, although it did not appoint a distributor in China until 2020. The disputed domain name is identical to the textual elements of the Complainant’s BIONIKE mark while the Respondent’s BIONIKE product (a fungicide) is in one of the same classes of goods as the Complainant’s trademark registration (class 5). In the Panel’s view, the Respondent’s explanation that he devised the BIONIKE mark from the characters “拜你克” to refer to pest control is implausible.

The Panel recalls that it is not a general domain name court, and that the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy establishes a streamlined, inexpensive administrative dispute resolution procedure intended only for the relatively narrow class of cases of “abusive cybersquatting”. The UDRP is not an appropriate procedure to adjudicate a trademark dispute such as this one with complex evidentiary issues, where the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court to resolve a dispute between the Parties.

Therefore, the Panel has decided to deny the Complaint, not on the merits, but on the broader ground that the case regarding the disputed domain name is part of a wider, more complex trademark dispute between the Parties that exceeds the scope of the UDRP. The wider dispute can be addressed by a court of competent jurisdiction. See WIPO Overview 3.0, section 4.14.6.

C. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16.

The Respondent requests that the Panel declare that the Complaint was brought in an attempt at Reverse Domain Name Hijacking. The Complainant submits that the request is unfounded.
In the Panel’s view, the Complainant had a good faith belief that it could succeed. Although the Complainant was on notice of the Respondent’s trademark rights when it filed the Complaint, it provided an explanation as to why it did not believe that this undermined its claim regarding the second element of the Policy. As for the Complainant’s failure to take action against identical domain names in other TLDs, this is irrelevant and, in any event, the other domain names in question are not yet registered. The Complainant provided a link to its RedNote account which was not misleading as it clearly showed the very small number of followers.

Accordingly, the Panel declines to find that the Complainant was brought in an attempt at Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

(Matthew Kennedy)

Sole Panelist
Date: March 27, 2025

PANELLISTS

A few questions answered everything about this case… 

Is the Domain Name <OneTab.com> composed of descriptive terms? 

YES 

Is ‘OneTab’ phrase in the Domain Name in common/descriptive use by numerous third parties? 

YES 

Can ‘OneTab’ be safely used outside the Complainant’s Industry of Browser Extension?

YES

Does the Domain Name have a prior registration date than the Complainant’s Trademark?

YES 

Did the Respondent ever approach the Complainant for the sale of the Domain Name? 

NO 

Did the Respondent make any use of the Domain Name that may infringe the Complainant’s rights?

NO 

Was the Complainant interested in purchasing the disputed Domain Name before initiating these proceedings? 

YES 

Did the Complainant approach anonymously through a broker? 

YES 

The Buy It Now (BIN) price was revised to $50k on April 30, 2024 itself, is this evident?

YES 

Did the Complainant produce communication that it had with the broker between April 30, 2024, and May 7, 2024? 

NO

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OneTab Ltd v. Ankit Oberoi, WIPO Case No. D2024-2412

1. The Parties

The Complainant is OneTab Ltd, United Kingdom, represented by Adam Taylor of Adlex Solicitors, United Kingdom.

The Respondent is Ankit Oberoi, United States of America (“United States”), represented by Ankur Raheja of Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <onetab.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2024.

On June 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the complaint and the proceedings commenced on June 19, 2024. In accordance with the Rules, paragraph 5, the initial due date for Response was July 9, 2024. Upon the Respondent’s request, the Response due date was extended to July 13, 2024, as per paragraph 5(b) of the Rules. The Response was filed with the Center on July 13, 2024. On August 2, 2024, the Complainant filed a Supplemental Filing. The Respondent filed a Supplemental Filing on August 9, 2024.

The Center appointed Jeremy Speres, Reyes Campello Estebaranz, and Gerald M. Levine as panelists in this matter on August 1, 2024. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has, since approximately 2013, offered a web browser extension under the mark ONETAB that functions as a productivity tool designed to reduce web browser tab clutter by allowing the user to store and organize their browser tabs as lists. The Complainant’s extension is available in the web stores of all major web browsers. As of May 13, 2024, the extension had nearly 3.5 million active weekly users.

The Complainant has operated its main website at “www.one-tab.com” since approximately 2013. The Complainant owns United Kingdom Trademark Registration No. 4014513 ONETAB (word) in classes 9 and 42, with a registration date of May 10, 2024; and European Union Trademark Registration No. 018986553 ONETAB (word) in classes 9 and 42, with a registration date of June 20, 2024.

The Respondent is a technology investor and entrepreneur, having co-founded a digital advertising business,  Zelto/AdPushup, in 2013, which was acquired by Japanese marketing technology firm Geniee for USD 70 million in 2023. Part of the Respondent’s trade has involved buying and selling domain names consisting of common or descriptive words, a number of which he has listed for sale.

The Respondent acquired the disputed domain name on March 4, 2023, for USD 4,300 through an auction run by the Registrar. After acquiring the disputed domain name, the Respondent offered it for sale via a Registrar parking page to which the disputed domain name resolved. The Respondent initially listed the disputed domain name for sale at a “buy now” price of USD 25,000, which he increased to USD 50,000 once the Complainant expressed an interest in acquiring the disputed domain name via a broker.

The disputed domain name presently resolves to a Registrar parking page indicating that the disputed domain name is already registered but may still be available.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name was registered and used in bad faith for the purpose of selling it to the Complainant or its competitor. The Respondent must have been aware of the Complainant when he acquired the disputed domain name, so the Complainant contends, considering the immense repute of the Complainant’s mark, the Respondent’s involvement in the online technology sector, the fact that the Respondent’s co-founder used the Complainant’s app in 2014, and the fact that the Complainant’s extension is predominantly showed in any search conducted over the Internet for the terms “onetab” or “one tab”.

B. Respondent 

The Respondent contends that the Complainant has not satisfied the second and third elements required under the Policy for a transfer of the disputed domain name. Notably, the Respondent contends that he registered the disputed domain name in good faith, without knowledge or targeting of the Complainant, with its meaning in the pharmaceutical industry as a contraction of “one tablet” in mind, either for development of a pharmaceutical business or for resale. The Respondent further contends that the term “onetab” comprises two commonplace words and is not exclusively used by the Complainant, pointing to competing browser extensions using the term, its use in the medical industry as a contraction of “one tablet”, its use by guitar tablature websites, and various third-party trademark registrations consisting of “onetab” in the United States and the United Kingdom.

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) as it claims that the Complaint was brought in bad faith as an alternative strategy to acquire the disputed domain name after a failed attempt at negotiating its sale with the Respondent.

6. Discussion and Findings

A. Preliminary Issue – Supplemental Filings

The Complainant and the Respondent each filed unsolicited supplemental filings.

Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of unsolicited supplemental filings. Admissibility of supplemental filings is to be assessed based on relevance, foreseeability, the need to conduct the proceedings with due expedition, and the equal treatment of the parties so that each has a fair opportunity to present its case. Paragraph 10(b) of the Rules; Societé aux Loteries en Europe, SLE v. Take That Ltd., WIPO Case No. D2007-0214; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.6.

The Response included evidence that was peculiarly within the knowledge of the Respondent that could not reasonably have been anticipated by the Complainant, e.g., the Respondent’s counteroffer of USD 20,000 for the disputed domain name which does not appear to have been communicated to the Complainant by the broker. The Response also contained an allegation of RDNH, and the Panel agrees with the statement made by the Panel in Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941 to the effect that a complainant facing an allegation of RDNH is “entitled to defend itself”. To that extent, the Panel admits the Complainant’s Supplemental Filing.

The Complainant’s Supplemental Filing included evidence not included in the Complaint that the Respondent should be given an opportunity to respond to, e.g., the five new annexures introduced in the Complainant’s Supplemental Filing. To that extent, the Panel admits the Respondent’s Supplemental Filing.

B. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel also finds that the Complainant has established unregistered trademark rights for the purposes of the Policy. WIPO Overview 3.0, section 1.3.

The Complainant’s ONETAB mark is plainly identical to the disputed domain name for the purposes of the  Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

C. Rights or Legitimate Interests

Given the Panel’s findings in relation to bad faith, it is not necessary to consider the second element of the Policy.

D. Registered and Used in Bad Faith

The evidence in this case is exceptionally finely balanced.

The primary evidence in favor of the Complainant indicating targeting is as follows:

– The Complainant began trading under its ONETAB mark roughly ten years prior to the Respondent’s acquisition of the identical disputed domain name, and the Complainant clearly enjoys unregistered rights in its mark that long predate the Respondent’s acquisition. The Complainant’s mark would appear to be well known, at least within its niche of browser extensions, and probably more broadly within the web software industry. For example, the majority of Internet search results for “onetab” and “one tab”, at least across the first three pages of results, relate to the Complainant.

– The Respondent is a technology investor and entrepreneur. In particular, the Respondent founded a successful digital advertising firm. Digital advertising is delivered through browsers and the Respondent would thus have had much exposure to the browser ecosystem. It is therefore quite conceivable that the Respondent encountered the Complainant’s extension prior to acquisition of the disputed domain name.

– The Complainant’s evidence establishes that the Respondent’s co-founder used the Complainant’s extension in 2014. Although this isn’t direct evidence of the Respondent’s knowledge of the Complainant’s extension, it does at the very least show that those working within the Respondent’s industry and his home country of India (the Respondent describes himself as “an Indian citizen who has primarily been operating from India” despite his address contained within the WhoIs record) have used it, and it is quite plausible that co-founders could have shared the extension with one another.

– The Respondent registered <cleargum.com> and offered it for sale. The mark CLEARGUM seems to be well known and exclusively associated with a single medicinal chemical producer, at least insofar as Internet search results for the mark are concerned. A search of the WIPO Global Brand Database for “cleargum” indicates that all CLEARGUM trademarks are owned by the same entity. There is thus a real possibility that the Respondent at least knew of that trademark before registering that domain name, and it is quite conceivable that the Respondent may have targeted the trademark owner in that instance.

Given the apparent repute of the CLEARGUM mark and the fact that it is apparently exclusively associated with one party, this would, prima facie, seem to be an instance where it would not be unreasonable to conclude that the Respondent at least should have known of the trademark. WIPO Overview 3.0, section 3.2.2.

– The Respondent doubled his listed asking price for the disputed domain name when he was informed by the broker about an enquiry from a potential buyer. Although the Respondent was not informed of the identity of the interested party by the broker, a simple Internet search would have given the Respondent a good idea of who the interested party was, given that the Complainant is the most prominent user of the term “onetab” at least insofar as Internet search results are concerned. It seems quite conceivable that this is what caused the Respondent to double his asking price. In any event, regardless of whether the Respondent had established the potential buyer’s identity before doubling his asking price or not, the Respondent’s actions in this regard seem somewhat unprincipled. Listing a domain name for sale for one price, and then drastically increasing that price as soon as there is an enquiry about it seems like a questionable practice, albeit not an illegal one. This is evidenced in the broker’s surprise once he learned of the price increase, and his subsequent asking of the Respondent how he could explain this to the potential buyer.

The primary evidence in favor of the Respondent indicating good faith is as follows:

– There is no direct evidence of targeting. The Respondent has not done anything overtly targeting the Complainant, and all the evidence indicating targeting is circumstantial.

– The term “onetab” (or “one tab”) is potentially descriptive of a variety of things, and this is borne out by the fact that it is not exclusively associated with the Complainant in use. There is another browser extension using the term as a “brand” name and two others which use it as part of their name. It is used in the medical industry descriptively as a contraction of “one tablet” and as the brand name of a cold and influenza medication. The similar domain name <1tab.com> was previously used by an online pharmacy in the Respondent’s home country of India. A children’s literacy charity uses it as the brand name of its educational tablet computers. Other domain names consisting of “onetab” have been used for music tablature. The Panel’s independent search of the website archive Wayback Machine revealed the disputed  domain name itself previously resolved to a music download website in 2003, per the following link: “web.archive.org/web/20030602170715/onetab.com”.

– The Panel’s independent search of the TMview database for “onetab” revealed eight different
registered trademarks consisting of ONETAB (some with stylization and/or a device) owned by seven different owners in various classes and jurisdictions.

– Apart from <cleargum.com>, the acquisition of the disputed domain name seems consistent with the Respondent’s apparent practice of registering descriptive domain names for resale, not for their trademark value but rather their semantic value.

– The Respondent has a certain history of registering inherently descriptive medical domain names. He owns <hindustanhealth.com>, <neuralcare.com>, and <medagent.com>. The latter was acquired by the Respondent three days before he acquired the disputed domain name, and is similarly composed to the disputed domain name, consisting of a contraction of a medical term plus the uncontracted form of another descriptive word. However, the evidence does not permit the Panel to reach any conclusion about the Respondent’s purpose for acquiring <onetab.com>.

– Paradoxically, the fact that the Respondent doubled his asking price for the disputed domain name upon learning of an enquiry from an interested buyer, unprincipled as it may have been, may point away from the Respondent having targeted the Complainant at the time of initial acquisition of the disputed domain name. As discussed above, it is quite conceivable if not likely that the Respondent doubled his asking price after conducting research into the identity of the potential buyer. After he had established that the potential buyer could well be the Complainant (given that it is the most prominent user of the mark) it is very plausible that he doubled his asking price upon learning that the Complainant was successful and of means. If that is the case, it points away from him having targeted the Complainant earlier, at the time of acquisition of the disputed domain name, bearing in mind the conjunctive nature of the bad faith element. If he had targeted the Complainant from that early point, his asking price would probably have been the higher one to begin with and there would not have been any need to increase it later.

On the record before it, the cumulative weightings of the factors for either Party are so close that the Panel cannot say with confidence that either outweighs the other. The Panel’s view is that it would require the evidentiary tools available to a court having greater probative capacity such as discovery, cross-examination, subpoenas, criminal sanctions for perjury etc., to decide which of the Parties’ positions is the more likely.

Given that the burden of proof is on the Complainant, the Panel finds the third element of the Policy has not been sufficiently established. However, this should not be understood as an approval of the Respondent’s actions, but rather a consequence of the Panel’s view, on the record before it, that this case is better suited to court adjudication.

The Panel further considers that should new material evidence come to light in future that is reasonably unavailable to the Complainant at the time of the present proceeding clearly demonstrating that the disputed domain name is targeting or has targeted the Complainant, it may be possible for the Complainant to refile the Complaint, subject to the usual considerations on refiling. WIPO Overview 3.0, section 4.18.

E. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at RDNH or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.

The Panel declines to find RDNH for the following reasons: The merits are extremely close, and the Complainant’s case was an arguable one about which reasonable minds could differ. The Complainant’s first usage of and unregistered rights in its mark long predate the Respondent’s acquisition of the disputed domain name, which is identical to the Complainant’s mark. The Respondent’s co-founder used the Complainant’s extension in the past and the Respondent may well have had prior knowledge of the extension. The Respondent’s registration of <cleargum.com> is questionable, as discussed above.

All of this suggests that the Complainant genuinely believed this to be a case of cybersquatting, and that belief does not seem to have been unreasonably held in light of these facts.

7. Decision
For the foregoing reasons, the Complaint is denied.

Jeremy Speres
Presiding Panelist

Reyes Campello Estebaranz
Panelist

Gerald M. Levine
Panelist

Date: August 14, 2024