Your guide to UDRP dispute management

The first requirement of the Uniform Domain Name Dispute Resolution Policy is that the disputed domain name be identical or confusingly similar to the complainant's trademark.

To meet this criterion, the complainant must demonstrate ownership of a registered trademark and provide evidence of such ownership (e.g., registration certificates, copies of assignment deeds or licensing agreements for authorised licensees). Moreover, the complainant’s trademark rights must predate the registration of the disputed domain name. However, in certain circumstances, if the complainant can show that the domain name was registered after significant publicity surrounding a new project by the complainant, but before the complainant formally registered the trademark, the panel may still recognise the complainant’s rights.  

How is confusing similarity evaluated? 

To determine whether a domain name is confusingly similar to a complainant's trademark, a side-by-side comparison is conducted. While mere similarity is not sufficient under the UDRP, confusing similarity is assessed based on whether the domain name creates confusion with the trademark.  

Importantly:  

• Actual public confusion is not required: The analysis focuses on whether the domain name itself is likely to cause confusion with the trademark, irrespective of evidence of actual confusion among the public. 
• The trademark must be recognisable: The complainant’s trademark must remain recognisable within the domain name. For example: 
  – ANNOUSHKA was deemed recognisable in “annaoutlet.com” (<a href="https://www.wipo.int/amc/en/domains/decisions/pdf/2022/d2022-2880.pdf" rel="noreferrer noopener" target="_blank">WIPO Case No. D2022-2880</a>, transfer ordered).  
  – INSTA was found recognisable in “saveinstaa.com” (<a href="https://www.wipo.int/amc/en/domains/decisions/pdf/2024/d2024-3568.pdf" rel="noreferrer noopener" target="_blank">WIPO Case No. 2024-3568</a>, transfer ordered). 
  – BOURSORAMA was found recognisable in BOURSORAMA SA v BRS (<a href="https://udrp.adr.eu/decisions/detail?id=62fac505bfe30f8f4e0cde5a" rel="noreferrer noopener" target="_blank">CAC-UDRP-103657</a>, transfer ordered) 

Practical guidance for meeting the first requirement 

For both complainants and respondents, careful preparation and attention to detail are critical when addressing the first element of the UDRP. 

-->For the Complainant 

Registered trademarks: 

• Ensure your pleadings are thorough and include all necessary documentation to substantiate your rights. 
• Pay particular attention to the dates of registration and confirm that your trademark rights predate the domain name's registration. 

Unregistered trademarks: 

• Evidence is paramount. Provide robust, independent proof of use that establishes your unregistered mark's recognition in commerce as a source identifier. 
• Demonstrate secondary meaning or distinctiveness where applicable, especially for descriptive marks. 

-->For the Respondent 

Challenge the evidence: 

• Scrutinise the complainant's submissions, especially for unregistered trademarks. Demand clear and independent evidence of their rights. 
• Highlight any deficiencies, such as unsupported claims or lack of evidence to establish distinctiveness. 

Leverage disclaimer or descriptive terms: 

• If the domain incorporates common or descriptive terms, emphasise the legitimacy of such usage. 

Address conclusory allegations: 

• Call out vague or unsubstantiated claims by the complainant 

Establishing rights or legitimate interests in the domain name is the second element under the Uniform Domain Name Dispute Resolution Policy.

There are specific circumstances, which, if proven based on the evidence presented, establish such rights or legitimate interests: 

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): 

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or 

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” 

-->Bona fide use before notification of the dispute 

The first circumstance focuses on whether the respondent can demonstrate use, or demonstrable preparations to use, the domain name or a corresponding name in connection with a bona fide offering of goods or services before receiving notice of the dispute. This requires respondents to present evidence that their intent and actions related to the domain name were legitimate from the outset. 

For example, in WIPO Case No. D2022-4649 (utvpak.com), the panel noted that the respondent had registered the disputed domain name as part of a genuine business operating for several years prior to the domain name’s registration. This suggested that the respondent had used the domain name in good faith for a bona fide offering of goods and services. Such evidence aligns with Paragraph 4(c)(i) of the Policy. 

-->Commonly known by the domain name 

Respondent can also claim rights or legitimate interests if they are able to prove that they are commonly known by the domain name. 

In WIPO Case No. D2024-0151 (mermet.com), the panel concluded that the respondent was commonly known by the domain name, which corresponded to their family name. Furthermore, the respondent demonstrated that the domain name was used for a non-commercial purpose –specifically, genealogical research – indicating a legitimate and fair use.  

Similarly, business entities may rely on this defence if they can prove consistent public recognition of their trade name corresponding to the domain name. 

-->Legitimate non-commercial or fair use 

The third circumstance involves legitimate non-commercial or fair use of the domain name without intent for commercial gain, misleadingly diverting consumers or tarnishing the complainant’s trademark.  

In WIPO Case No. D2022-2256 (pappagyros.com), the respondent submitted substantial evidence proving they operated a legitimate, award-winning restaurant in Texas under the trade name “Pappa Gyros”. The respondent demonstrated that the trade name had been continuously used in connection with their restaurant and website since at least 2017, aligning with the requirements of Paragraph 4(c)(iii). 

This defence is commonly employed in cases involving criticism or parody sites, where the domain name includes the complainant’s trademark alongside terms that signal criticism or commentary. 

In WIPO Case No. D2022-0411 (antonbilchikisafake.com), the panel determined that the respondent had a legitimate interest in the domain name because it was used for a non-commercial criticism site. The website did not include advertisements, sales offer or any commercial links. The content was primarily informational and focused on criticism, satisfying the requirements for legitimate non-commercial use under Paragraph 4(c)(iii). 

Special considerations for descriptive or generic domain names 

Certain factors may impact the determination of rights or legitimate interests, depending on the nature of the domain name and its context. Domain names that consist of generic or descriptive terms are often deemed to have legitimate interests, provided they are registered in good faith. However, such terms must be used in alignment with their dictionary meanings. Alternatively, the respondent must provide a well-substantiated explanation, supported by evidence, to justify the selection of the domain name for reasons unrelated to its connection with the complainant. 

In cases where a domain name is registered with the intent to exploit or target a complainant’s trademark, legitimate interests are unlikely to be found.  

For example, in WIPO Case No. D2022-2037 (voicenft.com), the respondent registered a domain name incorporating the complainant’s trademark shortly after the complainant’s public announcement regarding its platform. The panel determined that this registration was likely an attempt to target the complainant’s trademark, negating any claim of legitimate interest. 

In WIPO Case N° D2023-1813 <lucknowsupergiants.com>, the complainant filed multiple trademark applications in India for the term "LUCKNOW SUPER GIANTS”. The respondent argued that the domain name consisted of generic or dictionary terms widely used elsewhere, claiming the complainant had no exclusive rights. However, the panel found this insufficient to establish legitimate rights or interests. To succeed, the respondent needed to show actual use of the domain name in connection with its dictionary meaning or provide evidence explaining its selection for reasons unrelated to the complainant. No rights or legitimate interests can be found if the respondent primarily registered the domain name to target the complainant’s trademark. 

Practical guidance for meeting the second requirement 

For complainants, it is essential to anticipate and address the respondent’s likely defences related to rights or legitimate interests. If the domain name incorporates a dictionary word or phrase, the complainant should provide evidence that the respondent’s use is predatory or inconsistent with bona fide practices. It is also important to establish a connection between the respondent's registration of the domain name and the complainant's trademark. 

For respondents, the key to success lies in providing substantial evidence. They must clearly explain their use of the domain name, offering supporting documents or other proof of genuine business activity, preparations for use or their association with the name. If the domain name is used for criticism or commentary, respondents should highlight the non-commercial nature of their site and ensure that the content is not merely a pretext for cybersquatting, commercial activity or tarnishing the complainant’s trademark. 

The Uniform Domain Name Dispute Resolution Policy requires both bad faith registration and bad faith use for a claim to succeed. Bad faith registration focuses on the respondent's intent at the time of acquisition.

Panels assess whether the registrant targeted the complainant’s trademark or had it in mind when registering the domain. Without evidence of targeting, the claim generally fails. This dual requirement ensures that disputes focus on the registrant's intent and behaviour throughout the domain's life cycle. 

Targeting as a key component of bad faith 

The concept of targeting plays a central role in proving bad faith. Panels examine evidence that the registrant specifically targeted the complainant or their trademark. Such evidence can be either direct, such as the content of the website associated with the domain name or circumstantial, such as the timing of the domain registration in relation to the complainant’s trademark rights. These factors help to establish intent and bad faith. 

For example, in the case of Morgan Stanley v James Honeygreen, the domain “ms-privatewealth.com” was fraudulently used to impersonate the complainant. The use of the domain to deceive customers and exploit the complainant’s reputation unequivocally demonstrated bad faith. In contrast, cases involving descriptive terms or generic words often result in a finding of no bad faith if there is insufficient evidence of targeting. For instance, in the case of Apnea Sciences Corporation, the domain name’s descriptive nature outweighed any claims of bad faith, as there was no indication that the registrant specifically targeted the complainant's trademark. 

Passive holding and bad faith 

Even in situations where a domain name is inactive, a finding of bad faith use is still possible under the doctrine of passive holding. The non-use of a domain name, such as displaying a blank or “coming soon” page, does not automatically preclude a panel from determining bad faith. According to WIPO Overview 3.0, section 3.3, passive holding can constitute bad faith when specific factors are present. Panels consider the following circumstances particularly relevant when applying the passive holding doctrine: 

• The distinctiveness or reputation of the complainant’s trademark, which may suggest the registrant deliberately sought to benefit from its fame. 
• The failure of the respondent to submit a response or provide any evidence of actual or planned good-faith use of the domain. 
• The concealment of the respondent’s identity or the use of false contact information, which often breaches registration agreements and indicates bad faith intentions. 

These factors, taken together, enable panels to assess whether passive holding is part of an overall pattern of bad faith behaviour, even when the domain name remains inactive. 

Practical pleading for the third requirement 

In an UDRP dispute, both complainant and respondent must carefully structure their arguments to address the Policy’s requirements. 

For complainants, the primary focus should be on demonstrating that the respondent registered the domain name with knowledge of the complainant’s rights and with an intent to target those rights. The complainant should anticipate possible rebuttals by the respondent, such as claims of good-faith registration or use and address them proactively. Furthermore, complainants are encouraged to identify any patterns of behaviour that may demonstrate the respondent’s history of bad faith actions, such as registering multiple domains that target various trademarks. 

Respondents, on the other hand, should aim to prove a lack of knowledge or intent to target the complainant’s trademark. Providing evidence of legitimate use or planned use can reinforce a claim of good faith. Transparency and candour are essential, as respondents who openly explain the purpose behind their domain registration and demonstrate its lawful use are more likely to succeed in defending against UDRP claims. 

Understanding how to demonstrate bad faith registration and use is essential for both complainants and respondents involved in a UDRP dispute. By focusing on the intent behind the registration and use of a domain name and being aware of the factors that can signal bad faith, parties can build stronger cases. Whether you’re seeking to prove bad faith or defending against it, careful preparation and strategic pleading are key to success.