IP Guardian Pty Ltd v Mira Holdings

WIPO Case No. D2025-2201

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

IP Guardian Pty Ltd v. Mira Holdings

Case No. D2025-2201

1. The Parties

The Complainant is IP Guardian Pty Ltd, Australia, internally represented.

The Respondent is Mira Holdings, United States of America (“United States”), internally represented.

2. The Domain Name and Registrar

The disputed domain name <ipguardian.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2025. On
June 5, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 6, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on June 10,
2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

June 12, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the the due date for submission of the Response was July 6, 2025. Further to a request from the Respondent, the due date for submission of the Response was extended until July 10, 2025, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on July 10, 2025.

page 2

The Center appointed Jane Seager, Andrew D. S. Lothian, and Matthew Kennedy as panelists in this matter on August 19, 2025. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an Australian law firm headquartered in Sydney, New South Wales.

The Complainant is the owner of Australian Trademark Registration No. 1628612, IP GUARDIAN, registered on June 17, 2014.

The Complainant is also the registrant of the domain name <ipguardian.com.au>, from which it operates a client-facing website.

The disputed domain name lists a creation date of March 8, 2021. It appears that the Respondent acquired the disputed domain name at auction on March 11, 2021.

The disputed domain name redirects to a parking page provided by the Registrar stating that the disputed domain name is for sale and inviting Internet users to fill in a contact form in order to obtain a price for the sale of the disputed domain name. The Complainant submitted a screen capture showing that the disputed

domain name was offered with a Buy-It-Now (“BIN”) price of AUD 42,556 (equivalent to USD 25,000).

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the trademark IP GUARDIAN. The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed
domain name. The Complainant asserts that no authorization was granted for the Respondent to use the
Complainant’s trademark. The Complainant notes that the disputed domain name is parked and offered for
sale and submits that this indicates an intention to profit from the Complainant’s trademark. The
Complainant asserts that the Respondent is not commonly known by the disputed domain name, nor is the
Respondent using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant further submits that the disputed domain name was registered and is being used in bad faith. The Complainant notes that the Respondent acquired the disputed domain name in 2021, years after the Complainant’s registration of its IP GUARDIAN trademark. The Complainant argues that the Respondent’s listing of the disputed domain name for sale at an inflated price demonstrates the Respondent’s intent to profit from the sale of the disputed domain name to the Complainant or to a competitor in bad faith pursuant to paragraph 4(b)(i) of the Policy. The Complainant asserts that the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its trademark under the “.com” generic Top-Level Domain (“gTLD”). The Complainant cites the decision SRL BOWTEX v. Mira Holdings, WIPO Case No. D2024-1632, in which the panel ordered transfer of another domain name held by the Respondent and argues that the Respondent has engaged in a bad faith pattern of domain name registration.

The Complainant requests transfer of the disputed domain name.

page 3

B. Respondent

The Respondent states that the disputed domain name is described as a generic combination of “IP” (either Internet Protocol or Intellectual Property) and “guardian”, which is widely used in commerce globally. The Respondent notes that numerous companies operate under similar names or use related domain names across various industries, including intellectual property consulting, cybersecurity software, NFT communities, and legal services. The Respondent asserts that such widespread usage supports a finding that the disputed domain name is not exclusively associated with the Complainant’s business or trademark.

The Respondent explains that it acquired the disputed domain name in March 2021 at a public auction on NameJet for USD 450. The Respondent states that the Complainant had an opportunity to bid for the disputed domain name during this auction but failed to do so. The Respondent argues that purchasing expired domains through auctions is a standard practice in domain investing and does not constitute bad faith.

The Respondent states that it operates as a professional domain investor with over 1,000 “generic” domains in its portfolio, including other two-word domains such as <ipserve.com>, <patentlaw.com>, and <protectionbrand.com>. These domain names are offered for sale or for lease on domain sales platforms without targeting any specific entity or trademark owner. The Respondent asserts that listing “generic” domain names for sale is recognized as a legitimate business activity under UDRP precedent.

The Respondent denies any knowledge of the Complainant prior to this proceeding and cites the following factors supporting its claim of good faith registration and use of the disputed domain name:

(i) The Complainant’s trademark rights are limited geographically to Australia under Nice Class 45 (for legal services). The Complainant holds no United States-based trademarks.

(ii)       The Respondent has never used the disputed domain name for legal services nor targeted Australian

consumers.

(iii) Since acquiring the disputed domain name, it has been parked with an inquiry page for general sale purposes. It was never offered directly to the Complainant.

(iv) Comparable sales evidence supports asking prices within industry norms for premium domain names (such as the disputed domain name).

The Respondent stresses that offering high-priced domain names for sale does not inherently indicate bad faith unless there is clear evidence of targeting a complainant’s mark.

The Respondent requests denial of the Complainant. The Respondent accuses the Complainant of having engaged in Reverse Domain Name Hijacking by filing the Complaint after receiving an initial price quote of USD 25,000.

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii)      The disputed domain name was registered and is being used in bad faith.

page 4

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned by relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Panel finds that the Complainant has shown rights in respect of the trademark IP GUARDIAN, the registration details of which are provided in the factual background section above. WIPO Overview 3.0, section 1.2.1.

The disputed domain name comprises the Complainant’s trademark in its entirety, altered only by the
omission of a space between the elements “IP” and “GUARDIAN” in the Complainant’s trademark. The
Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.

The applicable gTLD, in this case “.com”, is viewed as a standard registration requirement and as such may be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

The Panel finds that the first element of the Policy has been established.

B. Rights or Legitimate Interests

The Panel finds that it is unnecessary to consider this element in view of its findings under the third element below.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a list of non-exhaustive list of circumstances that, if found by a panel to
be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant’s
case is centered around paragraph 4(b)(i) of the Policy, which refers to circumstances indicating that the
respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who is the owner of the trademark or
service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s
documented out-of-pocket costs directly related to the domain name. To be successful under this provision,
a complainant must demonstrate that the respondent specifically sought to target the complainant’s
trademark through its registration of the concerned domain name, thereby evidencing an intent to exploit the
trademark’s goodwill or to otherwise act in bad faith. Conversely, UDRP panels have found that the practice
as such of registering a domain name for subsequent resale (including for a profit) would not by itself support
a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a
trademark owner (or its competitor). WIPO Overview 3.0, section 3.1.1.

The Panel acknowledges that the Complainant’s trademark predates the Respondent’s acquisition of the disputed domain name by over six years. However, the Respondent has argued that it acquired the disputed domain name through a public auction for its descriptive qualities and without knowledge of the Complainant or its trademark. The Respondent’s assertion that “IP” and “guardian” are terms widely used in commerce is supported by evidence of third-party use of similar terms in various industries, including intellectual property consulting, cybersecurity, and legal services. The Panel further observes that the Complainant has not provided evidence to support the inference that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name, indeed the Complainant has not provided any supporting evidence of its reputation.

As noted above, the disputed domain name resolves to a parked page with an invitation to purchase the domain name. The Respondent’s conduct appears consistent with its stated business model as a domain investor, holding a substantial portfolio of domain names comprising dictionary terms or combinations of dictionary terms. There is no evidence of the Respondent having made an approach to the Complainant in

page 5

an attempt to sell the disputed domain name, and the Complainant has not provided any other evidence to
demonstrate that the Respondent specifically targeted its trademark or business. The parking page to which
the disputed domain name redirects does not contain any content that suggests an intent to exploit the

Complainant’s mark.

Having weighed the evidence presented by both Parties, the Panel finds that the Complainant has failed to
establish that the Respondent registered the disputed domain name in bad faith pursuant to paragraph
4(b)(i) of the Policy.

The Complainant also seeks to rely on the decision SRL BOWTEX v. Mira Holdings, supra (“SRL Bowtex”), arguing that the Respondent has engaged in a bad faith pattern of domain name registration. The Panel notes, however, that the factual circumstances in that case differ significantly from those in the present matter. In SRL Bowtex, the trademark and second-level of the disputed domain name were both “BOWTEX” and the panel found the Respondent’s explanation for its registration (“bow” as a dictionary word, combined with “tex” as an abbreviation for “Texas”, “text”, or “textile”) to be contrived or implausible. In that case, for the panel to accept the Respondent’s argument regarding the composition of the disputed domain name, it was necessary to abbreviate the second part, but the resulting portmanteau was meaningless while directly corresponding to the complainant’s trademark. Furthermore, the complainant in SRL Bowtex held a trademark registered in the Respondent’s jurisdiction, meaning that even basic due diligence would have revealed the complainant’s interest. Additionally, the complainant had been the previous registrant of the disputed domain name, therefore the Respondent was objectively aware that a previous registrant may have had trademark rights, and basic due diligence would have shown that those rights subsisted notwithstanding the lapse of the disputed domain name, see Haringey London Borough Council v. Host Master, 1337 Services LLC, WIPO Case No. D2023-1321 and Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540.

In the present case, the circumstances are materially different. While it is true that one must abbreviate
“intellectual property” or “Internet protocol” to achieve the “IP” element of the disputed domain name, this
element has an entirely different quality from the “tex” element in SRL Bowtex. The “IP” abbreviation is a
meaningful term in and of itself, of universal applicability, while the other word in the disputed domain name,
“guardian” is a natural complement. Together, the two terms form a meaningful phrase that suggests
something or someone that protects IP addresses or intellectual property. The Panel considers this
combination of terms to be one that the Respondent could plausibly have registered as a domain name
because of its inherent value as a meaningful phrase, rather than because its value necessarily derives from
the Complainant’s mark. Moreover, unlike in SRL Bowtex, the Complainant’s IP GUARDIAN mark is not
registered in the Respondent’s jurisdiction. As noted above, there is no evidence beyond the existence of
the prior trademark rights of the Complainant to suggest that the Respondent was more likely than not aware
of the Complainant’s interest or was targeting it. There is also no evidence that the Complainant was the
previous registrant of the disputed domain name, nor that such information would have been discoverable
with basic due diligence.

In light of the foregoing, the Panel concludes that the Complainant has failed to demonstrate that the Furthermore, the Panel finds no evidence or other circumstances that would support a finding of bad faith registration under any other provision of the Policy. Accordingly, the Panel determines that the Complainant has not satisfied the third element of the Policy, and the Complaint must therefore be denied.

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking (“RDNH”) as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Prior UDRP panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. Reasons articulated by UDRP panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear

page 6

knowledge of a lack of respondent bad faith such as registration of the disputed domain name well before the
complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to
have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing
of the complaint, including relevant facts on the website at the disputed domain name or readily available
public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably
as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an
alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel,
(v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the
complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful
attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii)
basing a complaint on only the barest of allegations without any supporting evidence. WIPO Overview 3.0,
section 4.16.

The Panel has considered whether a finding of RDNH is appropriate in this case and concludes that none of the abovementioned circumstances applies. The Respondent alleges that the Complainant “chose to file this UDRP dispute in order to wrest control over the domain by legal means” after inquiring as to the price of the

disputed domain name. While the disputed domain name was offered for sale for USD 25,000, there is no evidence of the Complainant having made a direct approach to the Respondent or any attempt to purchase the disputed domain name beyond obtaining an indication of its price via the domain sales platform operated

by the Registrar. At the same time, the Complainant’s trademark rights substantially predate the does not find sufficient grounds to conclude that the Complainant acted in bad faith or with an improper purpose in bringing the Complaint. Rather, the Complainant’s arguments appear to have been made in a genuine attempt to protect its trademark rights. The Panel therefore declines to enter a finding of RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Jane Seager/ Jane Seager Presiding Panelist

/Andrew D. S. Lothian/ Andrew D. S. Lothian Panelist

/Matthew Kennedy/
Matthew Kennedy
Panelist
Date: September 9, 2025