By Steve Levy
The first part of the UDRP test (par. 4(a)(i)) requires a brand owner to prove that it owns trademark rights and that the disputed domain name is confusingly similar to that mark. The most common way to prove such rights is by submitting a copy of a trademark registration certificate.
A common defense by domain owners is that they acquired the disputed domain name before the brand owner had any trademark rights and so they didn’t target a non-existent mark in bad faith. But what happens when the domain name is registered after a trademark application is filed but before that application matures to a full-blown trademark registration?
A recent decision involving the domain name milli-lotto.net involved just this situation. The Complainant is the only company that is entitled to legally offer gambling, betting and lottery operations in Finland and filed an application for its MILLI trademark on March 21, 2025. On May 29, 2025, an article appeared in the Finnish press announcing that the Complainant would soon launch a new lottery game under the MILLI name. Respondent registered the milli-lotto.net domain name the next day (on May 30, 2025) and resolved it to a website that claimed to provide information about the new MILLI lottery but also contained advertisements and links to two other casino websites. The MILLI trademark application then achieved registration on June 23, 2025.
The Respondent defended the case pointing out that the MILLI trademark, although applied for, had not proceeded to registration at the time that the domain name was registered on May 30th. The 3-member UDRP panel rejected this, however, and found that the Respondent had registered the domain name in bad faith based on the significant media attention given to the Complainant’s May 29th announcement of it new lottery and so the Respondent was targeting the MILLI trademark despite the fact that its application hadn’t yet reached registration.
This decision is a great lesson of how brand owners shouldn’t count themselves out if they don’t yet own a trademark registration at the time that a cybersquatted domain name is created. They can either file a UDRP complaint and show common law trademark rights (through advertising and sales) or perhaps wait for their trademark application to reach registration before filing the case. In any event, proof that a domain name is targeting their existing or soon-to-be-launched brand can often carry the day and result in a UDRP win even without a trademark registration.