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Respondent’s Representation and Warranty in Assessing Bad Faith

To what extent should the representation and warranty provision of the domain name registration agreement be factored into an analysis of the respondent’s good or bad faith? If the answer is, as some panelists believe, that it should be a continuing factor, Is it equally applicable to all registrants or limited to high volume registrants? It was pointed out in the Note for November 12th that the Panel in City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) (complaint denied) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009) (transfer granted) offered a new reading of the Policy that bad faith registration can be found “retroactively,” meaning that even an arguably good faith registration should be set aside where there is conclusive proof of subsequent bad faith use of the disputed domain name.

Under this reading the representation and warranty is not an obligation limited to the acquisition, but one of continuing effect. Paragraph 2 incorporates the representation and warranty. It reads:

By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.

The new construction of the Policy takes its cue from Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) . Although it is too soon to tell how widely it is accepted among panelists it is beginning to draw adherents. It is accepted by the Panel in Ville de Paris v. Jeff Walter, D2009-1278 (WIPO November 19, 2009), enthusiastically:

The Policy itself expressly recognizes that, where the disputed domain name is identical or confusingly similar to the complainant’s trademark and the respondent has no rights or legitimate interests in the domain name, in certain circumstances bad faith use of a domain name alone is sufficient to entitle the complainant to a remedy. The Policy describes, in Paragraph 4(b)(iv), one instance of such circumstances. Other instances of such circumstances may be found by a panel, on consideration of all the facts before it.

Paragraph 4(b)(iv) differs from the other three examples of bad faith in that it concerns the use to which the domain name is put. Paragraphs 4(b)(i, ii and iii) concern the respondent’s “purpose” in registering the domain name. The list of the four examples is preceded by an introductory statement that “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith…” (Emphasis added).

The Panel’s view in Ville de Paris is that the continuing obligation and a retroactive finding of bad faith “should not be considered surprising or undesirable.” It fits with the logic of the Policy: “There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name.” Further, if the representation and warranty were a one time obligation

it would mean that even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired. It would, in short, give a “green light” to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy.

This means that every registrant, whether a high volume acquirer or of a single domain name, is responsible for determining whether it is infringing another’s rights either prior to registration or at any subsequent time. “This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future,” Octogen Pharmacal, supra.

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