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The Conjunctive Requirement of Bad Faith Enforced Regardless of Respondent’s Subsequent Bad Faith Use, However Egregious

In at least one respect the UDRP is a friendlier forum for respondents than the Anticybersquatting Consumer Protection Act (ACPA). This comes about because the conjunctive requirement under UDRP requires the complainant to demonstrate that the respondent’s act of registering the disputed domain name was in bad faith regardless of its subsequent use. The ACPA requires either/or proof: if the registrant either “registers, traffics in, or uses a domain name” protected as a mark, 15 U.S.C. § 1125(d)(1)(A)(ii). The Panel in BioClin B.V v. MG USA, D2010-0046 (WIPO March 22, 2010) leaves no doubt of his view about the Respondent’s conduct, but was constrained by the terms and precedent of UDRP to rule in its favor. Conversely, a respondent’s success in a UDRP proceeding is no guarantee of its winning an ACPA action. Nike, Inc. v. Circle Group Internet, Inc. (N.D. Ill. May 21, 2004) which rejected the ICANN Panel’s reasoning in Nike, Inc. v. Circle Group Internet, Inc., D2002-0544 (WIPO September 10, 2002).

A number of panelists have had second thoughts on the construction of the UDRP that allows the respondent to (egregiously) use the domain name in bad faith. There are three branches of this new construction, respectively “retrospective bad faith”, “unified concept” and “judging respondent’s conduct at renewal of registration.” The Panel in BioClin is among those who reject all three variations in favor of the consensus that holds that proof of subsequent bad faith use does not vitiate good faith registration. The new construction detailing the consequences of bad faith use following good faith registration (dating from mid-2009) represents an attempt to give a remedy to complainants under circumstances in which the respondent is clearly taking advantage of their trademarks. However, the Panel’s view in BioClin is this was not the “intention of the framers of the Policy.” This does not mean, of course, that the Policy is set in stone. On many issues the jurisprudence has evolved to accommodate changing circumstances, but in this particular circumstance the language of conjunction disallows finding bad faith registration “then” for conduct “now.”

The Panel makes it clear in obiter dicta that the complainant’s remedy against a respondent’s subsequent bad faith use of the disputed domain name must issue from a court of law:

So regardless of the fact that the Complainant did not have a United States trademark registration until fairly recently, it looks as if the Respondent has deliberately made its products look very much like the Complainant’s products. Why would any trader want to do that? The obvious answer is that he or she probably wanted to benefit from consumer confusion, and/or create the impression of an ongoing association with the owner of the copied get-up. In either case, the aim would likely have been to trade off that owner’s goodwill. Add the near-identity between the Domain Name and the Complainant’s mark, and the Complainant can hardly be blamed for taking the view that it had a strongly arguable case on the “bad faith use” issue.

The reason why the Panel in BioClin denied that complaint is that the Complainant failed to “provide any submissions or evidence directed to the question of bad faith registration as at February 23, 2002, and the Panel has found no basis on the present record for concluding that the Respondent was acting in bad faith vis a vis the Complainant and its mark at that time” (Emphasis added). If the complainant authorizes use of its trademark in a domain name without an agreement for its return upon termination of the right or license – see the Note for March 30th, “Continuing Legitimate Interest in Domain Name After Termination of Business Relationship” – then the issue is properly one for resolution (for parties subject to jurisdiction in the United States) under the Lanham Act.

Gerald M. Levine <udrpcommentaries.com>

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