The jurisprudence applied in adjudicating disputes between mark owners and domain name holders under the Uniform Domain Dispute Resolution Policy (UDRP) is essentially a system that has developed from the ground up; it is Panel-made law based on construing a simple set of propositions unchanged since the Internet Corporation for Assigned Names and Numbers (ICANN) implemented them in 1999. Its strength lies in its being a consensus-based rather than dictated jurisprudence.
That being said it should also be noted that panelists do not walk in lock-step, and since there is no “appellate” authority to correct errors of law (in the U.S. only the Anticybersquatting Consumer Protection Act (ACPA)), there are some who go their own way by applying alternative theories to find bad faith (all turned aside and rejected, incidentally). While these alternatives have caused vibrations (even consternation) they have also proved intellectually stimulating in identifying the right balance between conflicting rights. Paradoxically, we could not have arrived at the consensus-based jurisprudence we have without the intense conversations that have taken place.
It is of course frustrating for mark owners to learn that their exclusive rights to particular strings of characters (which is what domain names are) are not sufficient to prevail on claims of cybersquatting even when the marks predate the domain names. The jurisdictional limitations of the UDRP must also be frustrating since there is no remedy under the UDRP if their claims are for trademark infringement. Of the core principles of the UDRP the first (because it was enunciated in the first decided decision before being recanted by its author) is that the UDRP is a conjunctive model of liability (as opposed to the ACPA which is disjunctive). Principally, this means that if a domain name composed of generic terms is registered lawfully but subsequently pivots to bad faith use it is not in violation of the UDRP (although it may be a trademark infringement). Misconceived by some mark owners and panelists as bad faith is a variant of these facts in which the domain name is lawfully registered, but later pivots to bad faith use coinciding with the mark’s rising reputation. There are different alternative theories depending on whether the domain names predate or postdate the existence of the mark (both theories have been rejected).
It is with these variants that some panelists have applied the alternative approaches as though they represent the current state of the law. The panelists essentially focus on mark owners’ “exclusive” rights to particular strings of characters rather than assessing rights according to the developed jurisprudence of the UDRP. The most recent example is Developmentex.com, Incorporated v. Manuel Schraner, FA171000 1755537 (Forum November 27, 2017) (<devex.org>). (I do not say, and want to be perfectly clear here, that the Panel in this case is not a recidivist, but here he has strayed from the principles of the UDRP jurisprudence by applying the alternative theories that I mentioned above).
The facts in Developmentex.com are quite straight forward: the domain name was registered on March 7, 2005; the registration date for the mark was December 15, 2009. Complainant’s application for DEVEX certifies that its first use in commerce was April 1, 2008, so there is no common law right antedating the registration of the domain name. (There is an allegation that Respondent’s acquisition of the domain name is 2016 but the Panel accepts the 2005 date; possibly there was a renewal of registration in 2016, or starting in 2016 the website began including infringing links).
That investors register domain names for speculative purposes in the hope of future profit is not evidence of abusive registration, unless there is proof that the respondent intended to use it to take advantage of the goodwill of complaint’s mark, which it can only do if the mark is already in existence. In balancing rights, it has become a fixed principle that holding, using, or reselling lawfully registered (and where they predate marks, lawfully using them) is not a violation of the UDRP. This principle is affirmed in numerous decisions, most recently by a three-member Panel in Weeds, Inc. v. Registration Private, Domains By Proxy, LLC / Innovation HQ, Inc, D2017-1517 (WIPO November 23, 2017) (Complainant has commenced an ACPA action). A company that commences business using a name it later registers as a mark but which corresponds to an earlier registered domain name is in no better position than a company that rebrands itself and claims a better right to the corresponding domain name.
This conclusion has not always sat well with mark owners and panelists and it does not sit well with the Panel in Developmentex.com. In order to get the result they want these panelists apply the alternative theories that I mentioned above. To illustrate my point that the reasoning is inconsistent with UDRP jurisprudence, I will set out four statements by the Panel in which it justifies removing the domain name from Respondent followed by my comments. First,
 “[T]he fact that the <devex.org> domain name was registered before Complainant had trademark rights in <devex.org> does not blankly preclude the Panel from finding bad faith under Policy ¶ 4(a)(iii).”
This statement is inconsistent with the jurisprudence. A domain name predating a mark does indeed “blankly preclude” Complainant having an actionable claim, unless there are facts that trigger an exception to the rule (i.e. evidence of a publicized action by a complainant who has a claim to the mark even though not registered). The “blankly preclude[s]” incidentally is also the law under the ACPA. In making this statement and awarding Complainant the domain name the Panel even exceeds what a mark owner could hope to achieve under statutory law. which makes the decision to transfer the domain name doubly troubling.
 “Respondents registering an identical or confusingly similar domain name in anticipation of some party later acquiring rights related to such domain name are routinely found to have acted in bad faith pursuant to Policy ¶ 4(a)(iii).”
This statement is also inconsistent with the jurisprudence. I do not question that there are cases that support theories cited by the Panel, but the panelists in those cases rely on alternative approaches that have been discredited (principally, that bad faith can be measured from renewal of registration). An alternative approach that seems to have a Lazarus-like existence would make a lawful registration abusive if respondent uses the domain name in bad faith before renewing its registration and continues the bad faith use after renewal. The Panel cites Suneva Medical, Inc. v. Servet Temir / Nokta France, FA 1425709 (Forum April 12, 2012). Whether the same Panel would rule the same today is unlikely (although it can never be ruled out under the right circumstances). However, it should be noted that this decision was handed down during a period of deep thinking about the direction of the jurisprudence (following a potentially upending decision in 2009). The alternative approach proposed in that decision has been soundly rejected. The consensus view is set forth in the Jurisprudential Overview 3.0, Paragraph 3.9: “irrespective of registrant representations undertaken further to UDRP paragraph 2, panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.”
 “Aside from pointing to the immaterial fact that there may be multiple third parties with trademark rights in DEVEX, Respondent’s defeat of the Complaint hinges on the solitary notion that Respondent’s domain name was registered prior to Complainant’s registration of the DEVEX trademark.”
This “solitary notion” happens to be a bedrock principle. That there are multiple parties who could lay claim to a particular string of characters is, in fact (the Panel’s dismissive comment notwithstanding) a significant factor in determining bad faith registration. The USPTO database indicates there are other current and past owners of the same mark, two of whom (curiously!) have registration dates on or before 2005. If either of those two had been Complainant in this case, the decision to award the domain name to one of them would not have offended the jurisprudence (highlighted for emphasis).
 “In conclusion, there is no dispute that Respondent uses the <devex.org> domain name for its own benefit and that Respondent is aware of Complainant and its current DIVEX (sic) trademark.”
Respondent is undoubtedly aware of Complainant’s “current” use but it could hardly be charged with knowledge or found liable of infringing an owner’s “exclusive” rights to a mark that had no existence when the domain name was registered. This argument about retroactive bad faith based upon subsequent infringing content is now a dead-end under UDRP jurisprudence. (If the facts are what we are told they are and the case were to proceed to federal court, then the outcome is predictable).
Not surprisingly (because panelists are not in lockstep), there is room for disagreement on the application of law to facts, particularly where the drawing of inferences seals the conclusion. It is also not surprising that some within the roster of panelists are disposed to favor mark owners and others to favor domain investors; to the extent either end moves too far from the center, they become outliers to the jurisprudence. The one caveat is that there should be no disagreement about what the law is. It is on this point that outliers go astray; no less the Panel in Developmentex.com; in applying the wrong law he came up with the wrong result.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Supplement and Update through August 2016 published January 2017. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.