Competition for consumer attention in the digital environment inevitably gives rise to disputes most notably between trademark owners and domain name registrants. Alongside bona fide market participants, there are also actors seeking easy gains by registering domain names in bad faith, for example for resale or for exploiting another party’s reputation. This article outlines how bad faith is assessed in domain name disputes and highlights the key differences between the approaches taken under the UDRP and UA-DRP frameworks.
UDRP and UA-DRP: the regulatory background
The Uniform Domain Name Dispute Resolution Policy (UDRP) is an international administrative mechanism that governs disputes between trademark owners and domain name registrants regarding abusive domain name registration or use. Introduced by ICANN in 1999, it applies to gTLDs (including .com, .net, .org) and to those ccTLDs that have formally adopted the UDRP.
UDRP disputes are decided by administrative panels of the WIPO Arbitration and Mediation Centre, typically composed of one or three panelists.
The UA-DRP is the national analogue applicable to the .UA domain space. Introduced in 2019 by the administrator of the public .UA domain (Hostmaster Ltd.), it governs disputes concerning both second-level .ua domains and numerous third-level domains (including .com.ua, .org.ua, .in.ua, .net.ua, .kyiv.ua, .lviv.ua, .kharkiv.ua, and others).
Shared framework, divergent standards
Under both policies, a complainant must establish three cumulative elements:
- The domain name is identical or confusingly similar to a trademark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name;
- The domain name has been registered and/or is being used in bad faith.
It is the third element that is often the most difficult to prove and it is precisely here that the most significant divergence between UDRP and UA-DRP emerges.
The bad-faith threshold: a critical distinction
Under the UDRP, the complainant must prove both bad-faith registration and bad-faith use. Failure to establish either element is sufficient to defeat the complaint.
This is well illustrated by Advice Group S.p.A. v. yang jin jie (WIPO Case No. D2019-2829), concerning the domain name <wekit.com>. Despite evidence that the respondent had offered the domain name for sale and the complainant owned a relevant trademark, the panel denied transfer because bad-faith registration at the time of acquisition was not sufficiently proven.
By contrast, the UA-DRP adopts a lower evidentiary threshold: it is sufficient to establish either bad-faith registration or bad-faith use. In practice, this significantly strengthens trademark owners’ position.
A representative example is Hearst Communications, Inc. v. LLC HS Ukraine and HS Ukraine LLC (Case No. DUA2021-0029). The panel found that the respondent had originally registered the domain names <cosmo.com.ua>, <cosmopolitan.com.ua>, and <harpersbazaar.com.ua> pursuant to a valid licence agreement, precluding a finding of bad-faith registration. However, the respondent’s subsequent refusal to transfer the domains upon termination of the relationship constituted bad-faith use, which was sufficient under UA-DRP to justify transfer of the domain names to the complainant.
Typical indicators of bad faith
In practice, panels most frequently encounter the following indicators of bad faith:
- cybersquatting – registering a domain name primarily for resale to the trademark owner;
- blocking registrations – intentionally preventing a trademark owner from registering a corresponding domain;
- disruption of a competitor’s business;
- misleading diversion of users;
- monetisation of reputation, including pay-per-click advertising and redirects;
- phishing or counterfeit sales;
- domain name trading, involving serial registration of trademark-corresponding domains.
Particular attention should be paid to passive holding. Even if a domain name does not resolve to an active website, it may still be found registered and used in bad faith. The classic authority is Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), where the panel held that the combination of a well-known trademark, lack of respondent rights, and absence of any plausible good-faith explanation was sufficient to establish bad faith.
The role of trademark notoriety
The stronger and more widely known the trademark, the more likely it is that the respondent knew or should have known of its existence at the time of registration. Panels frequently draw explicit inferences of knowledge and intent in cases involving famous marks.
In LEGO Juris A/S v. Domain Administrator (WIPO Case No. D2010-1260), the panel noted that it was inconceivable that the respondent was unaware of the globally renowned LEGO brand, a factor that weighed heavily in the finding of bad faith.
For UA-DRP disputes, this assessment is typically framed with reference to the Ukrainian market and audience within the .UA domain space.
Evidence is decisive
Panels decide domain name disputes exclusively on the basis of the parties’ submissions and evidence. They do not conduct independent factual investigations. Accordingly, both complainants and respondents must present their arguments clearly and substantiate them with appropriate evidence.
Bad faith must be affirmatively demonstrated or convincingly rebutted through a coherent evidentiary record. Panels assess the totality of circumstances, including the timing and context of registration, subsequent conduct, manner of use, and communications between the parties. A well-structured legal narrative, supported by targeted evidence, is often more persuasive than voluminous but unfocused documentation.
The Oki Data test: when use may be legitimate
A special role under the UDRP is played by the Oki Data test, which applies in cases involving resellers, distributors, or service providers that use a domain name incorporating a trademark.
In Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903), the panel found the respondent’s use to be bona fide because it:
- offered genuine trademarked goods;
- sold only goods associated with the trademark, and not competing products;
- clearly disclosed its relationship with the trademark owner and did not present itself as the official brand website;
- did not attempt to corner the market in domain names corresponding to the trademark.
This decision has become a cornerstone of UDRP jurisprudence, and these four factors are routinely assessed when determining whether a respondent’s conduct constitutes legitimate use.
Conclusion
A finding of bad faith is the result of a nuanced assessment of the respondent’s conduct, the circumstances surrounding domain name registration, and the manner of use. Understanding the procedural and substantive distinctions between UDRP and UA-DRP enables businesses to build more effective brand-protection strategies and respond promptly to domain name abuse.
Ultimately, confidence in one’s own good-faith position combined with carefully crafted legal argumentation prepared by experienced counsel remains the most reliable foundation for success in domain name disputes.