This article was first published in the World Trademark Review magazine on 10 July 2025.
At the beginning of 2025, WIPO handled the ‘noon.ae’ case, which saw another complainant lose a domain dispute in an attempt to recover its domain name after it incidentally lapsed.
This domain fell under the UAE Dispute Resolution Policy, a variation of the Uniform Domain Name Dispute Resolution Policy (UDRP). Under the UAE policy, establishing bad faith is non-conjunctive, meaning that only registration or use is necessary to fulfil the third element.
It is crucial to examine why a respondent’s mere awareness of a complainant’s brand is insufficient on its own to establish bad faith or negate a legitimate interest, particularly when the domain name is a commonly used dictionary term. This is because, in such cases, proving that the respondent specifically targeted the complainant requires clearer and more persuasive evidence. It is also key to consider how prior negotiations, when initiated by the complainant, can complicate attempts to later use those discussions as evidence of the respondent’s bad faith.
The complainant, Noon E Commerce, operates its popular e-commerce platform from ‘noon.com’ and owned the ‘.ae’ domain as part of its UAE operations from 2017 until it lapsed in 2023. It holds several trademarks for NOON, including in the United Arab Emirates.
The respondent, a web project designer based in the United States, acquired the domain name through auction in January 2024 and owns a portfolio of numerous ‘.ae’ domains that comprise dictionary words.
The trademark holder alleged that the respondent’s registration of ‘noon.ae’ through auction – as well as ‘noonlearning.ae’, which redirected to ‘noon.ae’ – showed its targeting of the complainant and awareness of the NOON mark’s value and reputation. Noon argued that because it held more than six years of “extensive, continuous, and uninterrupted” use of the domain before it lapsed, the respondent must have been aware of Noon and registered the domain for its value as a trademark. The three-member panel took issue with this argument.
First, the panel agreed with the respondent’s contentions that ‘noon’ is a commonly known word in the English dictionary and as the 25th letter in the Arabic alphabet (‘ن’). The respondent also submitted evidence that showed multiple businesses using the term in connection to education resources, which the panel accepted.
The panel then acknowledged that the respondent did not deny awareness of the complainant’s e-commerce platform when it bid for ‘noon.ae’ in auction. However, the panel also recognised that this in itself failed to answer the question of whether the respondent had acquired the domain in bad faith. In fact, there was no reason why the respondent should have known the lapse was inadvertent.
Thus, the panel sided with the respondent, holding that other potential legitimate uses exist for this domain and therefore Noon failed to show that the respondent acquired the domain with the intent of taking advantage of its brand and reputation.
Another issue that led to the ruling in the respondent’s favour was that before filing its complaint, Noon had contacted the respondent with an offer to purchase ‘noon.ae’ for AED 5,000, which it declined. Instead, it advised that ‘noon.ae’ was “valuable”.
As a result, Noon relied on the claim that the domain name was acquired primarily for the purpose of selling it to the complainant for valuable consideration in excess of the respondent’s out-of-pocket costs (one of the UAE policy’s listed criteria in establishing a respondent’s bad faith).
Noon’s decision to rely on this as one of its main arguments to prove bad faith seemed risky, considering it was the party initiating the discussion.
There is a consensus view under the UDRP (and variations of) that complainants should bear the consequences when initiating prior negotiations. The panel in WIPO case D2024-0818 defined this as:
…the concept of the “Plan B case”, which is a case where someone attempts to purchase a domain name, is unsatisfied by the negotiations or ignorant of normal market pricing, and instead launches a UDRP while omitting evidence of its purchase attempt.
While Noon did not omit to mention its prior negotiations from its complaint, it instead used it as evidence against the respondent. Unfortunately for the complainant, the panel concluded that the generic nature of the term ‘noon’ was enough to cast doubt about the meaning behind the respondent’s comment – the domain name could be seen as valuable for its generic meaning rather than its trademark value.
Ultimately, it held that a complainant cannot prod a party into offering a transfer price and then invoke the offer-for-sale argument to show bad faith – particularly when a trademark’s strength is weak and a complainant does not suggest in its negotiation that the respondent’s registration was made in bad faith.
Assessing bad faith under the policy requires more than demonstrating that a respondent was aware of the complainant’s brand. This is particularly relevant where the disputed domain name is a common dictionary term that may have legitimate unrelated uses. Ultimately, awareness does not automatically equate to targeting with the view of taking advantage of the brand’s reputation. Panels look for clear evidence of targeting to establish bad faith. Noon’s submissions may have held more weight without the circumstances surrounding the generic meaning of its trademark.
The panel’s decision was further impacted by the complainant’s reliance on its prior acquisition attempt as evidence of bad faith. Parties should approach such cases with care, recognising that persuasive, clear and well-documented evidence remains essential to meeting policy requirements and being successful in domain dispute proceedings.
Emily-Jane James
Legal Adviser
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