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Predictability Depends on the Panel You Draw

A general view formed early in the UDRP jurisprudence is that for predictability decisions “should consist of more than, it depends what panel you draw’.” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>). The goal for consistency is achieved through “a strong body of precedent” which “is strongly persuasive” even if not binding. Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010). “Whether [the consensus in holding that a respondent in the domain name business] is justified may be a matter for debate, but in the opinion of the Panel there is a strong body of precedent which, though not binding, is strongly persuasive.” This consensus notwithstanding, on some issues, most notably the split views on noncommercial speech which has the distinction of having a “View 1” and “View 2” (essentially a majority and minority) rating in the WIPO Overview, and less the frequent “binary” versus “unitary” views which is noted in the WIPO Overview but not with the same distinction, it truly does depend on “what panelist you draw.”

Two decisions bring the roulette wheel criticism into perspective, Big 5 Corp. v. EyeAim.com / Roy Fang, FA1308001513704 (Nat. Arb. Forum October 11, 2013) and Guru Denim Inc. v. Ibrahim Ali Ibrahim Abu-Harb, D2013-1324 (WIPO September 27, 2013). Dissents were filed in both cases. In Big 5, the majority holds to a variant of the unified view. In Guru Denim, the majority holds to the binary view. The binary view construes paragraph 4(a)(iii) as requiring complainant to prove both “registration in bad faith” and (separately) use in bad faith. The unified view construes the paragraph as requiring proof that respondent “registered and is using the domain name in bad faith.” The distinction vigorously pointed out by the dissent in Guru Denim is that the phrase “in bad faith” qualifies “registration and use.”

In Big 5, the Respondent had registered <big5.com> many years before Complainant acquired its trademark, but had begun using the domain name in bad faith after Complainant’s success in the marketplace. It was using the domain name in bad faith when it renewed registration. The majority concluded that

Respondent’s Paragraph 2 of the Policy representation and warranty given in January 7, 2012 [when the registration for the domain name was renewed] was knowingly false since: i) Respondent intentionally changed his use of the disputed domain name; ii) The new use is unrelated to Respondent’s earlier business and trademark registration; iii) The new use is the display of pay-per-click links which are basically there to profit from consumers confusion between the disputed domain name and Complainant’s trademarks; iv) The new use occurred prior to the renewal held to be a registration for purposes of paragraph 4(a)(iii) and; v) There has been no legitimate use since renewal.

In the consensus “binary” view, these facts would not be sufficient to order the domain name forfeited to complainant, but the majority in Big 5 finds “precedent” (that is, there is a case so holding) in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010). In Eastman, the Panel stated of the “unitary” approach while it was not “presently prepared to read the few unified concept approach cases to say that any use in bad faith, even occasional conduct that fits squarely within one of the examples of bad faith in paragraph 4(b) of the Policy, as automatically establishing bad faith for purposes of paragraph 4(a)(iii),” it nevertheless concluded that renewal after use in bad faith could be a basis for a finding of registration in bad faith:

Even though included as a Consensus View in the WIPO Overview this Panel’s assessment is that the Teradyne rule enjoys comparatively less precedential support than the traditional rule of interpreting paragraph 4(a)(iii). As noted, the cases are few and most simply endorse the Teredyne case without extended discussion, and the most thoughtful discussion, in PAA Laboratories, questions the original rationale for the rule.

This would not be a “binary” choice – that a renewal can be treated as a new registration. In other circumstances it might well be appropriate to continue to find otherwise “infringing” use still within the safe harbors of paragraphs 4(c)(i) or 4(c)(ii). The obvious case that comes to mind is when the respondent had nothing to do with the intervening circumstances that changed things – a trademark is registered after initial registration but before renewal, and the use to which the respondent puts the domain name remains materially unchanged, for example. That is a matter for panels in future cases.

Based upon the record in Big 5 “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 for purposes of paragraph 4(a)(iii), and finds that the Respondent registered and used the disputed domain name in bad faith.”   In contrast, in Guru Denim the Panel was diametrically opposite.  It did not “consider that the warranty concerning good faith use in the registration policy operates to overrule the conjunctive requirement. It seems to the majority that if the drafters of the Policy had intended there to be no conjunctive requirement then they would have used different language, such as the term ‘or’, but they did not do so.”

The “unified view” has fallen far short of any enthusiasm and is rarely met with except when it comes around as it has with Big 5 it gives weight to the complaint of inconsistency.   While it cannot be said that there is a 100% consistency in applying domain name law, some inconsistency is not surprising given the diversity of panelists’ national backgrounds, legal acumen, cultural values  and temperaments.

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