The phrase “retroactive bad faith” comes from two recent cases, same panelist, City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D-2009-0643 (WIPO July 3, 2009) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009). “Retroactive” refers to bad faith registration. The panelist proposes a new way of construing the Policy to establish that the respondent satisfies its contractual responsibilities.

WIPO Final Report contemplated a light investigatory duty for domain name acquisition insofar as researching trademark databases but this view came to be increasingly questioned as outdated. Observing the changing nature of the domain name business panelists began thinking that high volume registrants belonged in a different category and should be held to an enhanced investigatory standard. The new factor proposed in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006) focused on “acquisition of large swaths of domain names through the use of automated programs.” That case and others that follow its reasoning ushered in a profound shift in thinking about high volume registrants who pay “no apparent attention … in any particular case to whether the domain name being registered may be identical or confusingly similar to another’s trademark.” According to the Mobile Panel “even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark.”

There was, however, immediate push back to the Mobile approach. The Panel in Promatic International Limited v. Name Administration Inc., D2006-0673 (WIPO July 19, 2006) held that “[w]hile the Domain Name was acquired by the Respondent from a batch of lapsed domain names by way of an automated process, this Panel is uncomfortable with the concept of constructive bad faith.” The Panel in Aubert International SAS and Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009) noted that the Mobile approach “is not universally accepted.” The discomfort with the approach is that it establishes a dual standard, a heavier duty on high volume registrants, lighter on registrants of one or two domain names and the question is, Why should this be?

The challenge to the dual standard has been further advanced in the City Views and Octogen decisions, in a surprising way. The panelist’s view is that it “seems at a minimum inconsistent to require a registrant registering multiple domain names to perform some kind of trademark search in order to establish good faith registration, while a registrant registering only one or two domain names is not required to do any search whatsoever.” His epiphany has a curious backstory. It is not merely discomfort with the Mobile approach, but a conclusion that panelists have misconstrued the Policy; have wandered from the true path.

The City Views and Octogen approach is based on a close reading of the representations and warranties provision of the registration agreement and the decision in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). In the Panel’s view the representations and warranty provision

not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations.

This assumes that the representations and warranties provision must be read into the Policy, that it is an essential element, indeed “integral” in determining bad faith. “This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark.” Moreover, the registrant’s 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.” That means that every registrant, be it a high volume acquirer or of one or two domain names only, is responsible to determine whether it is infringing another’s rights either prior to registration or at renewal of registration. “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.”

Telstra is invoked for its holding that bad faith can be posited on passive use of the disputed domain name. “Just as in the Telstra analysis of passive use, whether the future use of a domain name constitutes retroactive bad faith registration will necessarily depend on an analysis of the facts and circumstances of any given case.” In Octogen, the Panel found “retroactive bad faith”; it did not in City Views. However, there is an explanation for the bad faith in Octogen, namely that the Respondent could be said to have registered the domain name for its employer; that it had no right to claim a legitimate interest at the time it registered the domain name. Both cases are cited as controlling authority in Denver Newspaper Agency v. Jobing.com LLC., FA0908001282148 (Nat. Arb. Forum October 16, 2009).