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Respondent’s Registration of Domain Name Contrary to Complainant’s Instructions

Employees, vendors and agents perform services and act on instructions of employers and principals. That a respondent in one of these classes registers a domain in his own name and refuses to transfer it on his employer’s or principal’s request is in violation of the UDRP. Sommerpine Books LLC v. Henton Enterprises, Hank Roberts, D2010-0805 (WIPO July 7, 2010). A distinction is made between respondents who register for their own accounts and those instructed to register for their employer’s or principal’s account.

Panels have refused to find bad faith registration where the respondent registered the domain name on consent or at the request of the trademark owner and it was understood that the domain name belonged to the respondent and not the complainant. Prior business relationships in which respondents legitimately hold domain names for their own accounts defeat a claim for abusive registration. See, e.g., ITMetrixx, Inc. v. Kuzma Productions, D2001-0668 (WIPO August 2, 2001); The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (WIPO January 5, 2001). A respondent with no prior business relationship who registers the domain name “to try to force Complainant to use his independent web-hosting service is a classic form of cybersquatting except that he sought work rather than cash,” Westfield Corp. v. Graeme Michael Hobbs, D2000-0227 (WIPO May 18, 2000).

In contrast, “[i]n cases where respondent has registered the domain name in its own name contrary to instructions received from complainant, panels have consistently held such a practice to constitute bad faith registration and use,” citing Champion Innovations, Ltd. v. Udo Dussling (45FHH), D2005-1094 (WIPO December 16, 2005) (“in this case, the Complaint suggests that Respondent was expected to register the Domain Name in the name of Complainant. In that circumstance, the Respondent’s refusal to follow his employer’s instruction and his registration of the Domain Name in his own name constitutes bad faith registration.”); Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), D2006-0991(WIPO October 5, 2006).

The Sommerpine Respondent has a business relationship with the Complainant as a vendor performing services. In pre-arbitration e-mails it admitted that “Henton held the domain names in trust for Complainant, because the disputed domain names were hosted on Respondent’s server.” However, the Respondent went one step further in rejecting the Complainant’s demand to transfer the domain name. It insisted that it had intellectual property rights in the content of the web site and that transfer of the domain name was contingent on an agreement that recognized that interest. However, this confuses two different regimes of interest.

There is no law or rule for domain names equivalent to a garage lien that authorizes an owner to withhold delivery of a vehicle pending payment of accrued fees. A respondent cannot hold for ransom a domain name without falling foul of paragraph 4(b)(i) of the Policy. It may have counterclaims for unpaid fees but the respondent has no remedy under the UDRP.

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

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