Project team: Kamal Tserakhau, Hleb Shumilau, Stanislau Tarmola
Case summary
Short single-word .com domains are almost impossible to find unregistered today. On the secondary market they sell for tens of thousands of US dollars, and for a brand that lives online its domain eventually does the job a high-street address does for a traditional business.
The client bought such a domain on an open marketplace in January 2019. The company that later filed the complaint did not exist yet, and neither did its trade mark. Over the following years the client built its own brand on the name and registered a trade mark for it.
The Arbitration & IT Disputes team of REVERA law group represented the domain holder in UDRP proceedings. The complaint came from a company in a different industry, which registered a trade mark identical to the domain name only in 2023.
The complainant was convinced the domain had changed hands only recently. It relied on technical changes that came with the launch of the client's project in 2025: the domain moved to new name servers and hosting, and then a launch page appeared on it. From this the complainant inferred both bad-faith registration and an intent to trade on its reputation, and it portrayed the client's business as a threat to its own brand.
The stakes in such a dispute are high. UDRP moves fast: once a panel orders a transfer, the registrar implements it after ten business days, and only a court action can stop that. A premium domain that has passed to another holder is almost impossible to recover in practice.
Losing would have cost the client the address its traffic and customer base are tied to, along with the money spent on the launch and marketing. The client would also have had to rebuild, almost from scratch, a brand the market already knows by that name.
Actions taken by the REVERA law group team
From the outset we knew the case would turn on the date the client bought the domain, and that we would have to prove that date with documents. So our first step was to reconstruct the domain's ownership history from the purchase onwards. The panel itself later called the acquisition date the key factual dispute in the case.
Our response included the marketplace's purchase confirmation dated 15 January 2019 and the registrar's record showing that the domain was added to the client's account the next day. Around the same time the client had bought several other domains built on the same word, and the panel treated this as further support for the date. The documents showed that the domain had passed to the client long before the complainant company existed, let alone filed its trade mark applications. The 2025 technical changes on which the complaint rested reflected the preparation and launch of the client's project, and the owner stayed the same throughout. Some of the evidence in our favour came from the complainant's own filing: the DomainTools report it attached recorded a change of registrar in January 2019 and included an October 2021 capture stating that the domain was no longer for sale.
The second line of defence concerned how the client uses the domain. It runs a licensed business under its own registered trade mark, does not imitate the complainant's product and never refers to it. Two companies in different industries share a name, and that coincidence alone does not make the use bad faith.
The response had to be prepared within the tight UDRP timetable: the rules allow 20 calendar days, and we obtained four more on request. We built the position on settled WIPO practice for domains acquired before a complainant's rights arose. In such cases panels do not normally find bad-faith registration unless the domain was bought in anticipation of the future mark (section 3.8.1 of WIPO Overview 3.1).
Outcome
The WIPO panel denied the complaint. It found that the client acquired the domain on 15 January 2019, before the complainant was incorporated, before it first used the name and before it filed its trade mark applications. In 2019 the client could not have targeted rights that did not yet exist, so the registration was not in bad faith. The panel held that using the domain for a licensed business under the client's own mark is a bona fide offering of services: the complainant had not made even a prima facie case to the contrary, and the client's UK trade mark is presumed valid unless shown otherwise.
The panel also rejected the tarnishment argument: a lawful business does not tarnish another's brand, even if the complainant disapproves of it. Nor did it accept the point about the privacy service, which is not in itself evidence of bad faith, especially as the operator's contact details are published on the website.
The decision was issued six weeks after the proceedings formally commenced, and the client's business operated as usual throughout.
Project highlights
The UDRP was designed to protect rights holders against cybersquatting, and WIPO statistics show year after year that the overwhelming majority of decided cases end with the domain being transferred to the complainant. Holders of premium domains therefore keep them comparatively rarely, and a complaint that fails on two of the three UDRP elements at once is rarer still.
The complainant did hold a trade mark and met the first UDRP element without difficulty. What decided the case was that the client's rights in the domain predated the complainant's trade mark rights, and that the client could prove it with documents.
The decision reaffirms two rules worth remembering for anyone who owns domains. Under the UDRP, what counts is the date on which the current holder acquired the domain, and the date of its original registration (2016 in this case) settles nothing on its own. Changes to name servers, hosting or website content do not, by themselves, prove that the domain has a new owner either.
For online businesses the practical conclusion is simple: a domain bought legitimately and used in good faith can be defended even against the owner of a registered trade mark, provided the holder's rights came first.
What brand owners should keep in mind
Keep the records of your domain purchases. The transaction confirmation and correspondence with the marketplace are worth keeping for years, together with registrar records. In this case the decisive evidence was a purchase confirmation more than seven years old.
Register your trade mark before your brand becomes visible. The panel treated the client's UK registration as valid, which helped show good-faith use of the domain. The earlier you file, the fewer grounds a future complainant has to portray you as a bad-faith acquirer.
Respond to demand letters on the merits. A chronology disclosed in good time often stops a dispute before a complaint is filed and spares both sides the time and cost of proceedings.
Bring in counsel from day one of the proceedings. The UDRP rules give 20 calendar days for a response (plus four more on request), and panels accept further submissions only at their discretion. In practice the response is the only chance to persuade the panel.
Why clients choose REVERA
The Arbitration & IT Disputes practice of REVERA law group has handled domain name disputes systematically for several years. Since the beginning of 2026, REVERA lawyers have represented clients in more than 100 proceedings, and 95% of them ended with the transfer or cancellation of domain names that infringed the clients' intellectual property rights.
We act on both sides of the dispute. Most often we represent rights holders recovering domains from cybersquatters, so we know which evidence persuades panels and where complaints usually fall short. That experience helps us find the weak points in an opponent's complaint and build a defence for the domain holder, as in the case described here.
The team also handles complex matters involving several domains and respondents. In one such case we consolidated ten domains held by several respondents into a single UDRP proceeding and secured the transfer of all ten to the client. The proceeding also helped identify who was behind the infringement, which gave the client a basis for a damages claim.
The team has collected this experience in REVERA's guide to the UDRP procedure, whose co-authors include the authors of this case study. The guide covers the timeframes and cost of proceedings, consolidating several domains in one complaint, and what to do after a denial.
We handle the whole case: we assess the prospects, gather evidence, represent the client before WIPO and see the decision through to implementation. If one procedure is not enough, we add pre-action correspondence and trade mark challenges before the EUIPO and national offices, and go to court in different jurisdictions where needed. Our clients include IT and e-commerce brands and game and app developers, for whom a domain is among the most valuable business assets.
Authors: Kamal Tserakhau, Hleb Shumilau, Stanislau Tarmola.
REVERA law group handles UDRP domain name disputes and brand protection online, from assessing the prospects of a case to representing clients before WIPO.
