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Transfer of Domain Name to Unrelated Third Party

There are two lines of reasoning from U.S. circuit courts on the issue of whether transfer of a domain name to an unrelated third-party or renewal of a registration constitutes a new registration. The resolution is critical to a finding of abusive registration under the Anticybersquatting Consumer Protection Act (ACPA). ICANN Panels have settled on the view that an unrelated transferee does not inherit its transferor’s good faith registration, but is answerable to a complaint of abusive registration based on its own acts. WIPO Overview 2.0, paragraph 3.7 states that “the transfer of a domain name to a third party does amount to a new registration.” Renewal of a registration by the original registrant is not a “registration.”

The two lines of reasoning from the circuit courts are discussed in Twitter, Inc. v. Geigo, Inc., D2011-1210 (WIPO November 2, 2011) (<twiter.com>). They came up because the Respondent cited a recent case from the Ninth Circuit, GOPETS Ltd. v. Hise, Digital Overture, Inc., ___ F.3d ___ (9th Cir. 2011) (previously discussed in my Note of September 28, 2011) in which the court held that “re-registration [by a related transferee] is not a ‘registration’ within the meaning of § 1125(d)(1).” The Panel preferred the other line of reasoning found in Schmidheimy v. Weber, 319 F. 3d 581 (3rd Circuit, 2003) (“We do not consider the ‘creation date’ of a domain name to control whether a registration is subject to [the Anticybersquatting Consumer Protection Act], and we believe that the plain meaning of the word ‘registration’ is not limited to ‘creation registration’.” ).

The Respondent in Twitter argued good faith registration on the authority of GOPETS because the domain name had been registered prior to Twitter’s trademark registration. However, the Ninth Circuit’s conclusion in GOPETS differed (only apparently) from the Third Circuit’s conclusion in Schmidheimy. I underscore “apparently” because the court in GOPETS explained why it reached a different conclusion. The Third Circuit believed that the domain name registration was “not covered by §8131(1)(A) because it had been made before the passage of ACPA” and needed a theory to find abusive registration of a domain name identical to a living person. 15 U.S.C. § 8131(1)(A) (previously §1129(1)(A)) prohibits registration of domain names that are the names of, or that are “substantially and confusingly similar” to the names of, living persons. The Ninth Circuit decided to follow the Second Circuit’s holding in Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 496-97 (2d Cir. 2000) that “§1125(d)(1) — and, by extension, § 8131(1)(A) — apply to registrations made before the passage of ACPA.” This being the case, “[i]f [defendant’s] initial registration violated § 8131(1)(A), as we would hold it did, the Third Circuit’s concern evaporates.” If the concern evaporates, then when another case comes to the Third Circuit docket the court will (presumably) conclude as did the Ninth Circuit.

The Respondent’s position in Twitter in any event is antipathetic to UDRP law because unlike the defendant in GOPETS it was an unrelated transferee. The Panel noted that

[h]ad Respondent made the initial registration in 2004 and maintained ownership through 2011 the Panel would likely have reached a different outcome about Respondent’s having registered the disputed domain name in bad faith. But Respondent has not even alleged that it or an affiliate owned the disputed domain name continuously since 2004, and has offered no proof (indeed no allegation) that it is or was affiliated with any prior owner. The available evidence, not contested by Respondent, shows another owner as late as March 2011.

Even though the defendants in GOPETS succeeded on the ACPA issue they nevertheless infringed plaintiff’s trademark rights under the Lanham Act because they “did more than merely register the domain name; they also put text on the gopets.com website indicating that it was “GoPets.com the official online website.”

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