VIREO S.r.l. of Italy filed a UDRP against Ashanti plc Limited of Hong Kong over the domain Vireo.com, represented by attorney John Berryhill. The Italian firm, founded in 2006 and holding EU and Italian trademarks from 2023, claimed that the domain had been transferred numerous times and was being held purely for speculation.
The three-member WIPO panel found otherwise: Evidence showed that the Respondent was the underlying registrant of the domain as early as 2004, two years before the Complainant’s formation and nearly two decades before its trademarks were registered. The Respondent, a professional domain investor, demonstrated that vireo is a dictionary word referring to a small bird and that its use and offering of the domain for sale were legitimate business practices not aimed at the Complainant.
The Panel ruled that no bad faith registration or use existed, noting that the Complainant’s brand did not exist when the domain was first acquired.
Final decision: Deny the transfer of the domain Vireo.com to the Complainant.
Copyright © 2025 DomainGang.com · All Rights Reserved.ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
VIREO S.r.l. v. Domain Admin, Ashantiplc Limited Case No. D2025-33641. The Parties
The Complainant is VIREO S.r.l., Italy, represented by Cantaluppi & Partners S.r.l., Italy.
The Respondent is Ashantiplc Limited, Hong Kong, China, represented by John Berryhill, Ph.d., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name vireo.com is registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2025. On August 21, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 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 (Jewella Privacy LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 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 August 28, 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 Complaint, and the proceedings commenced on August 29, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2025. On September 12, 2025, the Respondent requested a four-day extension to file a Response under paragraph 5(b) of the Rules, which the Center granted on the same day, setting a new due date for Response as September 22, 2025. The Response was filed with the Center on September 22, 2025.
The Center appointed Anne-Virginie La Spada, Edoardo Fano, and Andrew Lothian as panelists in this matter on October 15, 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 a company based in Italy which offers sustainability certification services. The Complainant was founded in 2006.
The Complainant holds the following trademark registrations:
– Italian trademark registration no. 302023000070023 for VIREO, registered on September 27, 2023, in classes 41 and 42;
– European Union Trademark registration no. 018871611 for VIREO, registered on September 29, 2023, in classes 41 and 42.The disputed domain name was registered on April 3, 2000. In the course of the years, the disputed domain name was registered in the name of different privacy services.
According to an invoice dated March 16, 2004, issued by Fabulous.com Pty Ltd (acquired since by the current Registrar), the renewal of the disputed domain name was billed to the Respondent, along with the renewal of many other domain names. The Director of Operations of the Registrar confirmed in an email to the Respondent dated September 19, 2025, that said invoice, showing renewal of the disputed domain name, corresponded to their archived records.
The Respondent is a professional domainer, making a business of buying and selling potentially attractive domain names. The Respondent is based in Hong Kong, China.
In 2010-2011, the disputed domain name was used in relation to a website displaying images of birds. Since 2015, the disputed domain name resolved to a page indicating that it was “possibly for sale”. Since 2019 and up to the filing of the Complaint, it resolved to a webpage indicating that “VIREO.COM is available for sale or other proposals”, with the following subtext: “A small American songbird, typically having a green or grey black and yellow or white underparts. A premium domain name like VIREO.COM can help your business achieve instant brand recognition, significantly lower marketing expenses, maximise brand recall, and accelerate value creation”.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name is identical to its trademark VIREO. The Complainant contends that the disputed domain name was transferred multiple times between various sellers solely for speculative purposes, and that the Respondent acquired it recently.
The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain name. A worldwide trademark search shows indeed that the Respondent has not registered any trademark for VIREO. The fact that the disputed domain name is offered for sale proves according to the Complainant that the Respondent lacks rights or legitimate interests. Likewise, the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services. According to
the Complainant, it is clear that the current use of the disputed domain name (i.e., its availability for purchase) demonstrates that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name but instead appears to be seeking to derive commercial gain from its sale, to the detriment of the rightful trademark owner.
Finally, the Complainant affirms that the disputed domain name was transferred more than a hundred times since its creation, the Respondent being the last owner. The Complainant contends – although there is no evidence on file supporting this affirmation – that the Respondent made a public offer including an exorbitant price ranging from USD 100,000 to USD 215,000. The fact that Respondent has taken steps to conceal its identity is another sign of bad faith in the Complainant’s eyes.
B. Respondent
The Respondent contends that the Complainant has not satisfied all three of the elements required under the Policy for a transfer of the disputed domain name. Its arguments in defence may be summarized as follows.
First, the Respondent points out that it was the underlying registrant of the disputed domain name in March 2004, well before the Complainant came into existence, as evidenced by the renewal invoice of March 16, 2004, identifying the Respondent. Moreover, it denies that the disputed domain name has been transferred multiple times, explaining that, since 2004, it has used successive privacy services offered by different registrars to obtain more favourable rates.
The Respondent contends also that there are numerous third-party registrations for VIREO that are not in the Complainant’s name and that predate the Complainant’s marks. The word “vireo” is a dictionary word designating a kind of bird.
Furthermore, with respect to rights or legitimate interests, the Respondent represents that prior UDRP panels have recognised that speculative investment in common descriptive terms can constitute a legitimate interest. Likewise, several previous panels have denied complaints brought against the Respondent under the Policy.
Finally, the Respondent contends that the term “vireo” is not associated with the Complainant, who has not demonstrated any reputation in Italy or elsewhere. The Respondent has not targeted the Complainant, neither when the disputed domain name was briefly used for bird related content, nor subsequently when the disputed domain name was offered for sale.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.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 but 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 Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
It is also well accepted that a generic Top-Level Domain, in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0, section 1.11.1.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Given the Panel’s findings below regarding the third element of the Policy, it is unnecessary for the Panel to analyse whether the conditions of the second element of the Policy are established.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(ii) of the Policy, the Complainant must show both that the disputed domain name was registered in bad faith and that is being used in bad faith. The conditions of registration in bad faith and use in bad faith are cumulative.
The Panel finds that the Respondent did not register the disputed domain name in bad faith targeting of the Complainant or its trademark rights because the Complainant was founded in 2006 and had no trademark rights at the time that the Respondent registered the disputed domain name. WIPO Overview 3.0, section 3.8.1.
Indeed, in the present case, the Respondent has brought forward sufficient evidence that it was the underlying registrant of the disputed domain name already in 2004, i.e., well before the Complainant came into existence in 2006, and well before the Complainant filed trademark applications for VIREO in 2023. The Respondent could not, therefore, have had the Complainant’s trademark in mind when it registered or acquired the disputed domain name in 2004. Consequently, the Panel finds that the condition of registration in bad faith is not met.
Furthermore, there is no indication in the file suggesting that the Respondent targeted the Complainant’s trademarks at any time after 2006. The Complainant has not provided evidence of any reputation outside Italy, and especially in Hong Kong, China where the Respondent is based. The Panel considers accordingly that the condition of use in bad faith is not met.
The Panel finds the third element of the Policy has not been established.
7. Decision
For the foregoing reasons, the Complaint is denied.
/Anne-Virginie La Spada/ Anne-Virginie La Spada Presiding Panelist
/Edoardo Fano/ Edoardo Fano Panelist
/Andrew Lothian/ Andrew Lothian Panelist
Date: October 29, 2025
