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Broad Interpretation of the UDRP For Standing and What Constitutes Valuable Consideration

Standing to maintain a UDRP proceeding is not limited to persons actually having a trademark. It is “well-established” notes the Panel in The Old Course Limited v. Patrick Woods, D2010-0682 (WIPO June 6, 2010) that “a high profile announcement of a new corporate name can generate goodwill in that name … and [is] recognised as sufficient for the purposes of the first element of the UDRP.” The principle is set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 3.1 as a consensus. It reads

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.

The “potentiality” principle was initially applied against domain names combining trademarks of merger partners. This is made clear in the WIPO Overview: “This often occurs after a merger between two companies, before the new trademark rights can arise.” All the early cases cited in the Overview were of this type. For example, combining MONSANTO and PHARMACIA [Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., D2000-0446 (WIPO August 1, 2000)]; combining MAERSK and SEALAND [A.P. Møller v. Web Society, D2000-0135 (WIPO April 15, 2000)]. However, the final clause of the Overview extended the principle to include a circumstance in which “the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

In The Old Course the Panel applies the principle to the Complainant’s change of name of its hotel from “Hamilton Hall” to “Hamilton Grand.” “The Panel notes that the Respondent registered the Domain Name and the corresponding ‘.co.uk’ domain name the day after the exhibition at which the Complainant announced its intention to renovate Hamilton Hall and rename it ‘The Hamilton Grand’.” No mystery here that the Respondent saw an opportunity to cash in on a nascent trademark.

Opportunistic registrations generally involve paragraph 4(b)(i) of the Policy, that the domain name was acquired primarily for the purpose of exchanging it for “for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Panels have also interpreted this paragraph of the Policy in the broadest possible manner. “Valuable consideration” can include demands for assistance in developing a business for example. The Respondent in The Old Course fits this mold. “On April 19, 2010, the Respondent wrote by email to the Complainant, referring to earlier telephone calls, and stating that he owned the website domains <thehamiltongrand.com> and <thehamiltongrand.co.uk>, which (he said) Kohler Group should really own on the basis that the new Hamilton building in St. Andrews was going to be called ‘The Hamilton Grand’.” The Respondent was not so crass (he insists) as to “want money for handing over these websites to you.” But he wanted something in exchange. Rather, what he wanted was “to discuss how Kohler can help me to build my business in St Andrews.” Very entrepreneurial!

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

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