The Uniform Domain Name Dispute Resolution Policy (UDRP) procedure is an arbitration procedure initiated with the WIPO Arbitration and Mediation Center allowing trademark owners to oppose the abusive registration of a domain name.
By offering trademark owners the possibility to obtain the cancellation or transfer of a disputed domain name, this procedure aims to prevent cybersquatting and other fraudulent activities involving domain names, such as phishing.
This cost effective and quick procedure (60 days from the day the complaint is filed), also present a high success rate, with the disputed domain name being transferred to the complainant in more than 80% of cases[1] .
In the digital era, getting the website of a counterfeiter or potential competitor to shut down can effectively paralyze its business. It is therefore easy to understand why trademark owners are inclined to opt for the UDRP procedure.
However, despite its significant advantages, a UDRP complaint is not intended to replace infringement proceedings. Thus, while UDRP complaints are rarely dismissed, a substantial proportion of these dismissals reflect the obvious confusion between these two types of actions in the minds of trademarks owners.
A UDRP complaint must satisfy all three of the following cumulative conditions:
- The disputed domain name is identical or confusingly similar to an earlier trademark in which the complainant has rights;
- The registrant of the disputed domain name has no rights or legitimate interests in the domain name;
- The domain name was registered and is being used in bad faith.
The first of the three conditions consists of a simple comparison between the complainant’s trademark(s) and the disputed domain name and doesn’t present any particular difficulties.
However, the existence of a legitimate interest or the good faith of the registrant of the domain name frequently prevents the experts of the Arbitration and Mediation Center from ruling in favor of the cancellation or the transfer of the disputed domain name, even when there is a potential infringement of the complainant’s trademark, as illustrated by the following recent cases:
- Existence of a legitimate interest in respect of the domain name.
In a decision dated March 3, 2025, a German company, CoachHub GmbH, owner of several trademarks including the term “Coachhub”, was denied the transfer of the almost identical domain name <coachhubz.com> registered by a natural person domiciled in Australia and using it for an application “enabling people looking for a suitable sports coach to identify and contact a sports coach likely to meet their needs.” Thus, despite the complainant’s Australian trademark COACHHUB No. 2217172 being registered for goods and services that appear to be similar to the activity carried out by the registrant of the domain name <coachhubz.com>, WIPO rejected the complaint on the grounds that the registrant had a legitimate interest in the domain name because he was using it in connection with a bona fide offering of goods or services. The experts referred to the actual activity of both parties, stating that “there is nothing in the record to suggest the Respondent’s Website is pretextual […] or was creating the false impression that this is an official website of the Complainant or that it was seeking to divert customers from the Complainant to the Respondent. In this context the Panel notes that the Complainant’s business and the Respondent’s business are very different.”
(WIPO, Case No. D2025-0095, <coachhubz.com>).
In a decision dated July 12, 2025, the Indian company Reliance Industries Limited, owner of a portfolio of around 1,400 trademarks registered worldwide containing the term “RELIANCE”, which is particularly well known in India, was denied the transfer of the domain name <reliancewood.com>. This domain name, registered by another Indian company, Reliance Wood Industries, was nonetheless used for an activity in the wood manufacturing and packaging industry that the expert deemed to be in competition with that of the complainant. While finding it improbable that the respondent be unaware of the complainant’s existence, and while considering that the domain name was more likely than not registered and used in bad faith by targeting the complainant’s trademark in order to “create a likelihood of confusion” with it, the expert considered that the registrant, who “has used the domain name for over 15 in connection with an ongoing, independent business enterprise“, had a legitimate interest in respect of the domain name.
(WIPO, Case No. 2025-1615, <reliancewood.com>).
- Registration and/or use of the domain name in good faith.
In a decision dated June 2, 2025, an American company was denied the transfer of the domain name <fairwell.com>, which redirected to an active website destined to the American public. In this decision, the expert noted that this domain name was identical to the American trademark of the complainant, FAIRWELL No. 5,590,912, and that ” the services offered by both parties overlap significantly“. However, the expert found that the domain name registrant acted in good faith, noting that there was insufficient evidence to suggest that the he had targeted the complainant’s trademark when acquiring the domain name. He justified his decision by stating that the “Complainant, based in Minnesota, did not provide evidence of how geographically extensive its actual operations are, and how extensive its advertising of the mark is. Respondent is based in Florida, more than a thousand miles from Complainant“. Therefore, the registrant was unaware of the complainant’s trademark when they registering the disputed domain name.
(WIPO, Case No. D2025-1096, <fairwell.com>).
In a decision dated February 14, 2025, a German company, HYDAC Technology GmbH, specializing in air conditioning systems and holding several “HYDAC” trademarks, including Indian trademark HYDAC No. 510465, was denied the transfer of the domain name <hydacservice.com>. This domain name, registered by an Indian company, was linked to an active website offering “services similar to those of the Complainant, namely air condition repair services“. To uphold the good faith of the registrant of the disputed domain name, the expert noted “the choice of the terms “hyd” and “ac”, as stemming from his place [Hyderabad] and nature of business [AC services] respectively”, was a choice of terms for “their descriptive meaning“. Thus, according to the expert, the registrant did not target the complainant’s trademark or attempt to cause confusion with its business, rather, he was conducting a good faith commercial activity via its domain name.
(WIPO, Case No. D2024-4947, <hydacservice.com>)
Conclusion
Online trademark infringement can exist without any act of cybersquatting being characterized. This is what the experts at the WIPO Arbitration and Mediation Center point out repeatedly in the above-mentioned cases. They state that they do not have jurisdiction to rule on possible infringement of the complainant’s trademark rights and that such acts must be judged by other instances, in particular the judicial courts.
Therefore, despite the UDRP procedure being faster and more cost effective, the criteria applied in this procedure are not the same as those applied in infringement proceedings. Consequently, an UDRP procedure cannot be used as a substitute for infringement proceedings.
The Lavoix teams remain at your disposal to advise you on the protection of your trademarks online by:
- Implementing domain name monitoring;
- Assisting you with your UDRP complaints.
[1] https://www.wipo.int/amc/en/domains/caseload.html#:~:text=These%20case%20numbers%20show%20that,the%20UDRP%20and%20national%20variations.