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The Use of Precedent in UDRP Decisions

Paragraph 4.1 of the WIPO Overview in response to the question “What deference should be owed to past UDRP decisions dealing with similar factual matters and legal issues?” states that the consensus view is “The UDRP does not operate on a strict doctrine of precedent.” However it is a rare panelist who writes a decision without citation to prior case law. Indeed, the answer to the question continues that panelists “consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties.” The Panel in 3636275 Canada, dba eResolution v. eResolution.com, D2000-0110 (WIPO April 10, 2000) stated that “[a]lthough entitled to consider principles of law deemed applicable, [he found] it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of Panelists world-wide under the ICANN Policy provides a fruitful source of precedent.”

Consistency (within reason, taking into account Emerson’s comment about the hobgoblin) has from the beginning been a paramount goal. Panelists with few exceptions support their legal conclusions by citing case authority. Particular decisions have been influential in developing the jurisprudence and it is appropriate to look back at them for their contribution to a continuing project.

The Panel in iFranchise Group v.Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO December 18, 2007) examined a variety of issues including potential abuse of privacy services, use of “robots.txt”, misleading or incomplete contact information in the Whois directory and determining the identity of the proper respondent. These were not central to the decision, but for each of these issues the Panel cited and reaffirmed the best reasoning in prior decisions, although the issue of “robts.txt” was one of first impression. The Panel noted that the “employment of robots.txt is often employed after a UDRP complain has been filed. Robots.txt has been employed in the present case, and when the Panel attempted to review the history of the use of the domain name at issue, its access to the historical web pages was blocked.” In dicta it stated that “absent convincing justification for the employment of robots.txt in a given case, the use of the device may be considered as an attempt by the domain name owner and operator to block access by the panel to relevant evidence.” In such a case,

it is the Panel’s view that a panel is entitled to assume that reasonable factual allegations that a complainant has made as to the historical use of the web site to which the domain name at issue resolves are true and that the use of robots.txt in the particular case may be considered as an indicia of bad faith.”

Central to the determination in iFranchise, however, were two issues of continuing interest, whether the Complainant qualified as having a trademark right and the date from which to measure bad faith. The term “iFranchise” is “not distinctive, but merely descriptive,” so found by the USPTO who refused registration on the Principal Register. “It is a rare situation in which a determination by a national panel charged with the issuance of trademarks may be second guessed by a UDRP panel. This is not one of those cases.” The ruling essentially follows precedent, that trademarks composed of generic or descriptive terms registered on the Supplemental Register have no monopoly on the mark associated with the complaint’s goods or services.

The second issue central to the determination in iFranchise concerns the bona fides in acquiring a domain name. Briefly, the relevant date is the date of acquisition. The fact that the acquisition was part of a business transaction does not change that result. In this respect, the principle embraces a similar factual pattern in which there is a rearrangement of ownership within a business entity, as discussed in yesterday’s Note.

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