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Holding Renewal Equivalent to New Registration

The consensus is that renewal of registration does not affect a registrant’s right to a domain name registered in good faith, while a transferee’s rights are determined from the date of its registration.  The Panel in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) describes this as the “traditional” approach.  However culpable of bad faith use, as the Policy is presently construed the original registrant is protected from forfeiture.   This view was articulated most clearly in Teradyne, Inc. v. 4Tel Technology, D2000-0026 (WIPO May 9, 2000), although raised in the first case decided under the UDRP.

The anomaly of a respondent intentionally targeting a trademark years after good faith registration is a feature of the Policy requiring the complainant to prove both bad faith registration (an act that took place in the past) and bad faith use (an act that is taking place in the present.)  The construction of the Policy that permits this has been questioned in a number of recent cases.  “Until last year’s decision in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (‘Mummygold’), panels had considered the requirements of ‘registration and use’ to be conjunctive, requiring a panel to consider both bad faith first at the date of registration, and to examine whether the respondent’s use was in bad faith.”

The Mummygold line of cases abandoned the conjunctive requirement in favor of a unified approach to the problem based on violation of a continuing duty under paragraph 2 of the Policy to respect the rights of trademark holders.   This approach has not met with overwhelming enthusiasm because, for among other reasons, as the Panel in Eastman Sporto notes “whether intended or not, the Mummygold approach

could impact an otherwise settled rule of decision on which ‘all parties’ have relied for a decade.  That rule of decision moreover defines a fundamental element of the Policy, and departing from our precedent in this matter could modify substantially Complainant’s burden of proof especially under the third element of the Policy.

Instead the Panel in Eastman Sporto resuscitates a position expressed in PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004) in which the Panel elected reluctantly to follow precedent, but noted his reservations about the “traditional approach.”  In making the finding it does

the Panel wishes to clarify that its decision under this element is based on the need for consistency and comity in domain name dispute ‘jurisprudence’….  The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired. (Emphasis added).

The Panel in Eastman Sporto agrees:  “Based upon the record in this proceeding. The Panel deems Respondent’s 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith.”  If this approach were adopted it would be as significant a departure from established law as that proposed by the Mummygold approach.  Instead of doing away with the “and” and “or” of paragraph 4(a)(iii) of the Policy domain name registrants will be held accountable for their representation and warranty at each renewal of registration.

Gerald M. Levine, <udrpcommentaries.com>

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