Domain disputes
UDRP decisions
Every UDRP argument rests on published decisions. These are the ones we cite most, summarised, with a link to each full text at WIPO.
- Telstra Corporation Limited v. Nuclear Marshmallows
- Case
- WIPO D2000-0003, 2000
- Domain
- telstra.org
- Outcome
- Transferred
A domain name that hosts nothing at all can still be used in bad faith, where the mark is well known, the registrant concealed their identity and no good faith use is plausible. This is the origin of the passive holding doctrine.
- Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc.
- Case
- WIPO D2000-0505, 2000
- Domain
- barcelona.com
- Outcome
- Transferred
The panel ordered barcelona.com transferred to the Barcelona City Council on the strength of the council's Spanish trademark registrations containing BARCELONA, not on any right in the city's name as such.
The transfer was later reversed by the United States Court of Appeals for the Fourth Circuit. A useful reminder that a UDRP decision is not final and can be displaced by a court.
- Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale
- Case
- WIPO D2000-0662, 2000
- Domain
- wal-martsucks.com
- Outcome
- Transferred
A domain combining a trademark with 'sucks' is still confusingly similar under the policy, because the test asks whether the domain includes the mark, not whether it would confuse anyone. The panel ordered transfer based on the registrant's bad faith attempt to sell the domain, not on any real risk of confusion.
- Chanel, Inc. v. Estco Technology Group
- Case
- WIPO D2000-0413, 2000
- Domain
- chanelstore.com, chanelfashion.com
- Outcome
- Transferred
Adding generic words like 'store' or 'fashion' to a famous mark does not remove the confusing similarity. The panel distinguished between writing about a brand and using its name as the domain itself.
- Nokia Corporation v. Nokiagirls.com a.k.a IBCC
- Case
- WIPO D2000-0102, 2000
- Domain
- nokiagirls.com
- Outcome
- Cancelled
Adding a generic word to a globally famous mark does not remove the likelihood of confusion. The respondent used the site to sell advertising space, which the panel treated as free riding on Nokia's goodwill.
- Julia Fiona Roberts v. Russell Boyd
- Case
- WIPO D2000-0210, 2000
- Domain
- juliaroberts.com
- Outcome
- Transferred
The UDRP does not require a registered trademark. Someone with enough public recognition can hold common law rights in their own name, sufficient to bring a complaint over a domain using it.
- Gordon Sumner, p/k/a Sting v. Michael Urvan
- Case
- WIPO D2000-0596, 2000
- Domain
- sting.com
- Outcome
- Complaint denied
The complaint failed on bad faith alone. The panel found the respondent had no legitimate interest in sting.com, but STING is a common English word and the alleged $25,000 sale offer was merely consistent with bad faith rather than proof of it.
- Smart Design LLC v. Carolyn Hughes
- Case
- WIPO D2000-0993, 2000
- Domain
- smartdesign.com
- Outcome
- Complaint denied
The panel dismissed the complaint and found reverse domain name hijacking, calling it 'a clear abuse of the Policy designed to deprive the Respondent of her domain name.' The respondent showed she had sought to develop a genuine business under the name.
- K2r Produkte AG v. Jeremie Trigano
- Case
- WIPO D2000-0622, 2000
- Domain
- k2r.com
- Outcome
- Complaint denied
The complainant had already ascertained facts establishing the respondent's legitimate interest in the domain before filing anyway, on unsupported cybersquatting allegations, which a majority of the panel found to be reverse domain name hijacking. One panelist dissented.
- Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc. and Bridgestone Corporation v. Jack Myers
- Case
- WIPO D2000-0190, 2000
- Domain
- bridgestone-firestone.net
- Outcome
- Complaint denied
Noncommercial criticism was a legitimate fair use of the domain. A critic does not have to add a word like 'sucks', and the disclaimer and the .net extension supported the finding.
- World Wrestling Federation Entertainment, Inc. v. Michael Bosman
- Case
- WIPO D1999-0001, 2000
- Domain
- worldwrestlingfederation.com
- Outcome
- Transferred
WIPO's first case under the UDRP. Offering to sell a domain to the trademark owner for more than the registrant's documented costs is itself bad faith use under policy paragraph 4(b)(i).
- Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"
- Case
- WIPO D2000-0847, 2000
- Domain
- madonna.com
- Outcome
- Transferred
A disclaimer does not fix a domain registered in bad faith. The panel found no plausible reason for choosing the name Madonna other than to trade on the performer's fame.
- Encyclopaedia Britannica, Inc. v. John Zuccarini, The Cupcake Patrol
- Case
- WIPO D2000-0330, 2000
- Domain
- encyclopediabrittanica.com, brtannica.com, bitannica.com, britannca.com
- Outcome
- Transferred
A record of registering misspellings of famous marks, a court injunction against the same conduct obtained by another plaintiff, and the respondent's failure to respond gave more than ample evidence of bad faith.
- Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico
- Case
- WIPO D2000-0477, 2000
- Domain
- walmartcanadasucks.com, wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com, walmartpuertoricosucks.com
- Outcome
- Transferred
The respondent registered five domains within days of losing an earlier Wal-Mart dispute, then demanded payment for 'domain name consultant' services. The panel called it a blatant abuse of the registration process.
- Do The Hustle, LLC v. Tropic Web
- Case
- WIPO D2000-0624, 2000
- Domain
- pollyester.com, pollyesters.com
- Outcome
- Complaint denied
Confusing similarity and no legitimate interest were made out, but the complaint failed on bad faith: the domains were generic or descriptive terms, the marks were homophones of polyester, and there was no offer to sell, among other factors.
- Oki Data Americas, Inc. v. ASD, Inc.
- Case
- WIPO D2001-0903, 2001
- Domain
- okidataparts.com
- Outcome
- Complaint denied
Sets the conditions under which a reseller has a legitimate interest in a domain containing the manufacturer's mark: it actually sells the goods, the site sells only those goods, it accurately discloses the relationship, and it does not corner the domain market. The complaint was denied.
- Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club
- Case
- WIPO D2000-1532, 2001
- Domain
- brucespringsteen.com
- Outcome
- Complaint denied
A majority assumed the name Bruce Springsteen was protected without deciding the point, found the registrant had some rights or legitimate interests, and held that bad faith was not proved. One panelist dissented.
- Lockheed Martin Corporation v. Dan Parisi
- Case
- WIPO D2000-1015, 2001
- Domain
- lockheedsucks.com, lockheedmartinsucks.com
- Outcome
- Complaint denied
A majority of the panel held that a domain adding "sucks" to a mark cannot be considered confusingly similar to it, and denied the complaint. One panelist dissented. Often cited against Wal-Mart Stores v. MacLeod, D2000-0662, which reached the opposite result.
- Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic
- Case
- WIPO D2000-1698, 2001
- Domain
- guiness.com
- Outcome
- Transferred
A domain one letter short of the mark is confusingly similar, and a disclaimer does not create a legitimate interest, because a visitor has already been diverted by the time they read it.
- Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store
- Case
- WIPO D2002-0774, 2002
- Domain
- milwaukeetool.com
- Outcome
- Complaint denied
On these facts, a distributor that registered the manufacturer's mark in good faith, before being told to stop, and sold its tools alongside other brands had a legitimate interest. The panel said expressly it was not suggesting a general rule.
- Croatia Airlines d.d. v. Modern Empire Internet Ltd.
- Case
- WIPO D2003-0455, 2003
- Domain
- croatiaairlines.com
- Outcome
- Transferred
Frequently cited on how a complainant makes out a prima facie case under the second element, after which the burden shifts to the registrant.
- Tom Cruise v. Network Operations Center / Alberta Hot Rods
- Case
- WIPO D2006-0560, 2006
- Domain
- tomcruise.com
- Outcome
- Transferred
Delay in bringing a complaint did not stop the transfer: the panel found no meaningful precedent for refusing relief because of delay, absent evidence of consent or of the registrant changing its position. Using celebrity names to send traffic to an advertising site is not fair use.
The respondent's president, Jeff Burgar, had won Bruce Springsteen v. Jeff Burgar, D2000-1532, in 2001 on similar facts. The Tom Cruise panel instead followed the decisions brought against him by Celine Dion, Kevin Spacey and Michael Crichton, which rejected the same celebrity portal defence.
- Karen Millen Fashions Limited v. Danny Cullen
- Case
- WIPO D2011-1134, 2011
- Domain
- karenmillenoutletonline.com
- Outcome
- Complaint denied
A complainant that alleges counterfeits has to prove it. Without evidence, the panel treated the site as a possible seller of genuine or grey-market goods under the Oki Data test, and the complaint failed on the second element despite the respondent's default.
- Wirecard AG v. Telepathy Inc., Development Services
- Case
- WIPO D2015-0703, 2015
- Domain
- boon.com
- Outcome
- Complaint denied
A domain registered before the complainant's trademark rights existed cannot have been registered in bad faith. Absent evidence it registered the domain with the complainant in mind, a domain investor may ask any price in reply to an unsolicited offer. A represented complainant that files anyway, knowing of a 16-year gap, abuses the proceeding.
- Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org
- Case
- WIPO D2015-1113, 2015
- Domain
- khloekardashian.com
- Outcome
- Transferred
A domain registered in anticipation of fame can be registered in bad faith before any trademark is registered. Registering a personal name two weeks after the person's television debut, then parking it with an invitation to buy, showed the registrant had her in mind.
- Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited
- Case
- WIPO D2015-1128, 2015
- Domain
- marlboro.party
- Outcome
- Complaint denied
A famous mark is not enough where the domain also matches a place name and the registrant has a pre-dispute pattern of registering geographic names. The complainant has to prove the registrant targeted its mark. The panel added that bulk registrants carry some responsibility to keep trademarks out of their algorithms.
- LinkedIn Corporation v. Daphne Reynolds
- Case
- WIPO D2015-1679, 2015
- Domain
- linkedlnjobs.com
- Outcome
- Transferred
Swapping one letter for a lookalike does not avoid confusing similarity, and typosquatting is itself evidence of bad faith registration. Using the domain as the sender address for fraudulent job offers was bad faith use, and a recent redirect to linkedin.com was further evidence of an attempt to impersonate LinkedIn.
- Accenture Global Services Limited v. Patel Holdings
- Case
- WIPO D2016-0367, 2016
- Domain
- accenturejobs.com
- Outcome
- Transferred
A domain does not need a website to be used in bad faith. An email address on the domain used to pose as the complainant's recruitment team was illegitimate use, and adding 'jobs' to a well-known mark made the confusion worse.
- Virgin Enterprises Limited v. Cesar Alvarez
- Case
- WIPO D2016-2140, 2016
- Domain
- virginmedia.shop
- Outcome
- Transferred
A new gTLD gives no cover. A registrant who picks a famous mark because people search for it, leaves the domain unused and asks the owner for more than out-of-pocket costs registers and uses it in bad faith. The trademark owner's failure to register in the sunrise period is irrelevant.
- Fédération Internationale de Football Association ('FIFA') v. Whois Privacy Shield Services / Winsum Wong
- Case
- WIPO D2016-2310, 2017
- Domain
- fifa.net
- Outcome
- Transferred
A world-famous mark registered under a different top-level domain from the owner's own site, fifa.com, supports an inference of bad faith. Three prior adverse decisions showed a pattern under paragraph 4(b)(ii), and a privacy service used by such a registrant weighs against it.
- Allianz SE v. IP Legal, Allianz Bank Limited
- Case
- WIPO D2017-0287, 2017
- Domain
- allianzkenya.com
- Outcome
- Transferred
Adding a country name to a famous mark does not avoid confusing similarity. Registering under a fictitious company name breaches the registration agreement, and with a well-known mark and no plausible good faith use, passive holding is bad faith under the Telstra test.
Summaries are ours. The decisions themselves are the authority, and each page links to the full text published by the WIPO Arbitration and Mediation Center.
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