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Applying the UDRP As It Is, Not As it Could or Should Be

The Uniform Domain Name Resolution Policy does not protect holders, who in granting or acquiescing in the registration of domain names incorporating their trademarks, have failed to protect themselves by written contract. As the Policy is written, mala fide use is not a sufficient basis or removing the domain name from the respondent, although the view that it is has become part of the conversation. For that relief, the trademark holder has an actionable claim under the Anticybersquatting Consumer Protection Act. In DSPT International v. Nahum, 08-55062 (9th Cir. 10-27-2010) (an appeal from a jury award) the Court held that “[e]ven if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. § 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom.”

But the ACPA construction is not the UDRPs. Under the Policy as written a respondent will not be deprived of the disputed domain name even if it has no right or legitimate interest in it. An illustration of this is Red Bull GmbH v. Roy Kenneth Nabben, D2010-1358 (WIPO September 30, 2010), citing A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., D2010-0800 (WIPO August 31, 2010). The Panel “considers that, to satisfy the third requirement of the UDRP, a complainant must show that the domain name was both registered in bad faith and is being used in bad faith, and that a registration originally made in good faith cannot turn into a registration in bad faith because the registrant subsequently uses it in bad faith.”

The exception is a transferee whose transferor used the domain name in bad faith. The consensus is that a transferee cannot rely on its transferor’s good faith registration. It is only in this respect that UDRP jurisprudence is similar to that of the ACPA. Renewal of registration, however, “without change of ownership does not constitute a new registration for the purpose of this requirement.” The Panel’s conversation in Red Bull is with those panelists who would apply the ACPA jurisprudence.

The dissent in A. Nattermann, for example, traces the quasi-“legislative” history of the UDRP through WIPO and early statements of ICANN to reach a different conclusion and set the UDRP on a new jurisprudential path. He states that

it is clear that the UDRP is not limited to the registrant’s state of mind (intent) at the time of registration. Regardless of what was in the mind of the registrant at the time of registration, the registrant made express representations and warranties as to future use. These representations and warranties are entirely consistent with the views of the registrant interests when they stated that “[t]he only way to tell that a registration was in bad faith was to look at subsequent conduct, i.e., use, and . . . the two should not be separated.

The Panel in Red Bull (incidentally, the presiding panelist in the majority in A. Nattermann) does not buy the A. Nattermann dissent’s argument. For him “where a company consents to the registration by a trading partner of a domain name incorporating its mark, the company can [that is, could] readily [have] protect[ed] itself by securing a clear written agreement specifying that it will own the domain name after the trading relationship comes to an end; and the agreement can further specify a cost effective means of dispute resolution.” Bad faith use does not convert to bad faith registration. If a respondent has registered a domain name with the consent of the trademark holder it cannot be said to have registered the domain name in bad faith. “In any case, the Panel is obliged to apply the UDRP as it is, rather than as it could or should be…. There is no evidence that the registration was originally made by the Respondent in bad faith. The Respondent has remained the registrant of the Domain Name since then, albeit that he renewed the Domain Name after the Complainant demanded that he cease using it.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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