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WIPO: UDRP Panel undeterred by ongoing national court litigation

Anchovy News

16 June 2026

News

WIPO: UDRP Panel undeterred by ongoing national court litigation

Chapter

Chapter
Chapter 1
Background Check this option
Chapter 2
Identity / similarity Check this option
Chapter 3
Rights / legitimate interests, and bad faith Check this option

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied a UDRP Complaint for the transfer of the disputed Domain Name vinitalyusa.com (the disputed Domain Name) finding that the Complainant had failed to establish registration of the domain name in bad faith under the third element of the Policy.

Chapter 1 Background

The Complainant in this case was Veronafiere, S.p.A., Italy, a joint stock company using the VINITALY mark in connection with exhibition services. The Complainant owned Italian trade mark VINITALY registered in 2007 and claimed unregistered trade mark rights in the mark VINITALY.USA through use in commerce in the United States.

The Respondent was an individual, the manager of an American company Fiere Italiane, LLC, ("Fiere"). The disputed Domain Name was registered on 1 May 2023 and resolved to a website promoting a "Vinitaly USA" Italian wine trade fair event.

Fiere and the Complainant entered into an Agreement in July 2024 as a result of which Fiere provided planning and organisational services to the Complainant for the aforementioned wine trade fair. The Complainant and Fiere also cooperated on the same event the year before. The Complainant granted Fiere a non-exclusive, non-transferable licence to use the "Vinitaly" brand and VINITALY trade mark to fulfil its obligations under the Agreement. The Complainant asserted that the Agreement had been terminated, a claim which the Respondent disputed.

To succeed in a complaint under the UDRP, a complainant must satisfy each of the following three requirements under the Policy:

(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Complainant alleged that, as owner of the VINITALY trade mark in Italy and claiming unregistered trade mark rights in VINITALY.USA, the Respondent had no rights or legitimate interests in the disputed Domain Name. The Complainant claimed that the rights for the Respondent's company to use the VINITALY mark were terminated when the Agreement ended, and that the registration of the disputed Domain Name would not have been in accordance with the Agreement anyway. The Complainant further asserted that the Respondent had registered the disputed Domain Name in bad faith by registering the Domain Name in its name, rather than that of the Complainant, and that the Respondent's use of the Domain Name was in bad faith as the Respondent was using the Domain Name to advertise and sell the Complainant's services under the Complainant's VINITALY mark.

The Respondent submitted that the dispute was not covered by the UDRP but was a contractual dispute as the Complainant and the Respondent had previously worked together and had entered into the Agreement. The Respondent noted that it had owned the disputed Domain Name since May 2023 and had since then developed a platform dedicated to Vinitaly USA. According to the Respondent, when the Complainant and Respondent began working together that year, the Respondent offered to use the disputed Domain Name to centralize communications on a platform, and that over the course of the Agreement, the registration and operation of the disputed Domain Name was conducted openly and with the Complainant's knowledge and participation. Regarding the Complainant's allegations of trade mark infringement, the Respondent countered that the Agreement covered the use of the VINITALY mark, but no mention was made of Vinitaly.USA. The Respondent contested the Complainant's claims of registration and use of the Domain Name in bad faith and asserted that the dispute would be better resolved before an arbitral tribunal to determine the validity of the Agreement.

Chapter 2 Identity / similarity

In relation to the first limb, the Panel found that the disputed Domain Name was indeed confusingly similar to the Complainant's trade mark, as the mark was recognizable within it. The first element of the Policy was therefore established.

Chapter 3 Rights / legitimate interests, and bad faith

The Panel did not find it necessary to consider the second limb, as it found that the third element was not fulfilled, meaning that the case was denied. Regarding the third element, the Panel considered the fact that the Parties knew each other and had a history of commercial cooperation and noted that the Respondent had registered the disputed Domain Name well before the Parties entered into the Agreement. The Panel acknowledged that the Complainant's VINITALY trade mark had been in force at the time, although VINITALY.USA was first used much later.

The Panel noted that the Complainant had not provided much background information concerning its relationship with the Respondent, apart from providing the Agreement which showed the Parties worked together on the International Wine Expo. The Panel underlined that understanding the events surrounding the registration of the disputed Domain Name was key to determining whether it had been registered and used in bad faith. Given that the disputed Domain Name had been registered months prior to the Agreement between the Parties, the Panel found that the terms of the Agreement were of limited assistance in determining the Respondent's motives at the time of registration of the disputed Domain Name.

The Panel pointed out that while the Respondent may have previously acknowledged that the Complainant was the owner of the VINITALY mark and brand name and received a licence at that time of the Agreement, this did not necessarily mean that the Respondent had registered the disputed Domain Name in bad faith in May 2023, and the Respondent had a number of possible reasons that would not necessarily indicate bad faith.

Notably, the Panel considered that the Respondent may simply have wanted to secure the disputed Domain Name for the Parties' proposed joint venture at a time when it remained unclear what corporate vehicle would ultimately be used to run the events and hold the related intellectual property, particularly in light of the Parties' collaboration surrounding the International Wine Expo and the later Vinitaly USA events.

The Panel then stated that what may have been a good faith registration could not retroactively be converted into a bad faith registration: termination of the existing Agreement could not have an effect on the initial intentions of the Respondent when registering the disputed Domain Name beforehand. The Panel found that, given these circumstances, the Complainant had not demonstrated, on the balance of probabilities, that the Respondent had registered the disputed Domain Name in bad faith, and the Panel therefore considered that the question of bad faith use was moot. The Panel ultimately concluded that the third element was not satisfied, and the Complaint was therefore denied.

The decision illustrates that Panels generally issue a UDRP decision on the merits, even in the event of overlapping court proceedings, where the relative expediency of the UDRP versus the court system is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of the potential for a court action to address causes of action separate from those being addressed in the UDRP proceeding.

In this particular case, although there was an ongoing trade mark and contractual dispute for the court to deal with, the issue surrounding the registration of the disputed Domain Name in bad faith under the UDRP was relatively straightforward and resulted in denial, thus leaving the court to resolve the wider issues as it saw fit. Once again this illustrates the fact that UDRP Panels will generally not use a concurrent court case as a reason to dismiss a UDRP complaint on procedural grounds, but will instead examine all the issues and make a decision on the merits if this is considered to be the right course of action for the parties.

The decision is available here.

Authored by the Anchovy News team.