This Note summarizes the linguistic analysis in response to the Octogen line of cases and the most recent rejection of the construction for “retrospective bad faith,” Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413 (WIPO January 20, 2010). The first case decided under the UDRP regime concluded that the complainant was required to plead and prove bad faith in the conjunctive. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D1099-0001 (WIPO January 14, 2000). The Panel noted that “the WIPO report, the DNSO recommendation, and the registrars’group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5, a.

The Octogen Panel had (he said) come to believe that “panelists, [himself included], seem to have largely overlooked the language of the Policy regarding the respondent’s representations and warranties. The question is whether the respondent’s representations and warranties should as a matter of policy “negate[] the temporal distinction suggested by 4(a)(iii) of the Policy,” Octogen.  According to the Validas Panel “this line of reasoning involves interpreting the Policy, paragraph 4(b)(iv) as deeming the particular form of bad faith use” to be conclusive of bad faith registration rather than merely evidence for it, citing PASSION GROUP INC. V. USEARCH INC., AF-0250 (eResolution Undated 2000). The Panel in Passion Group held that “[t]his contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.”

If “retroactive bad faith” or “unified concept” were the law “the clearly conjunctive language of paragraph 4(a)(iii) could be too easily circumvented,” Hertz System, Inc. v. Kwan-ming Lee, D2009-1165 (WIPO).  It “would in effect turn ‘and’ into ‘or’, which would be inconsistent on its face with the plain meaning of those words,” Validas.  In the view of this Panel, the only permissible way for this to be achieved is for ICANN to amend the Policy, paragraph 4(a)(iii) by changing “and” into “or”. Until then this Panel believes that (unsatisfying as it may be in its practical effect in the small number of cases in which it has been an issue) the view should prevail.

The difference in construction turns on the language in paragraph 4(b), which introduces the non-exclusive examples that support bad faith registration and use. Paragraph 4(b) contains language that suggests that if any of the non-exclusive examples are demonstrated, “in particular but without limitation … [they] shall be evidence of the registration and use of a domain name in bad faith.” However, it is a mistake to interpret this language as justifying a lower standard of proof for bad faith registration. “[P]aragraph 4(b) merely deems these circumstances ‘evidence’ of the registration and use in bad faith … thereby making it clear that the expression in paragraph 4(b) ‘registration and use of a domain name in bad faith’ is mere shorthand for the expression in paragraph 4(a)(iii) ‘the disputed domain name has been registered and is being used in bad faith’,” Validas.

Gerald M. Levine <udrpcommentaries.com>