The first five UDRP decisions (1 commenced in1999 and the first four of 2000) were decided in Complainants’ favor without Respondents’ participation. Default gives the complainant an advantage, but only to the extent that the Panel is working with a one-sided record. Otherwise, the burden of proof remains with the complainant on all elements of the Policy. Failure to appear and plead is not an admission of bad faith registration and use as it is in a court of law. The fifth decision, Telaxis Communications Corp. v. William E. Minkle, D2000-0005 (WIPO March 5, 2000) is based on a full record. It reveals that the parties had entered into negotiations without success, but once the UDRP proceedings commenced there began an escalation of threats by each party and bad faith use by the Respondent that raised the question whether in those circumstances the Panel would be justified in finding abusive registration.

It is important for understanding the jurisprudence to look back to the earliest UDRP cases to see the incremental process of its assembly. The jurisprudence we see now was not in existence in 2000. The only authorities then available were the WIPO and ICANN reports (the former equivalent to a legislative study), the Lanham Act and case law, generally from United States federal courts. The Panel in the second decision (the first in 2000), for example, cited a pre-ACPA decision, Intermatic v. Toeppen, 947 F.Supp. 1227 (N.D. Ill. 1996) for a fundamental proposition. The court held that “Toeppen’s intention to arbitrage the ‘intermatic.com’ domain name … was sufficient to meet the ‘commercial use’ requirement of the Lanham Act.” An inferential finding of “intention” satisfies the “primarily for the purpose” element of paragraph 4(b)(i) of the Policy.”

In Telaxis the Panel rested his decision on a close reading of the factual record without citation to authority. However, he established (put a foundation under) the timing issue. Unless a registrant is shown to have actual notice of the complainant or its trademark it is more probable than not that it registered the domain name in good faith. To assert otherwise the complainant would have to demonstrate that the domain name was registered with knowledge of the complainant and its trademark. The Panel in Telaxis also established that bad faith use following good faith registration does not support a finding of abusive registration. “Once the dispute arose” (the Panel concluded)

the parties each engaged in a series of actions for the primary purpose of strengthening their respective positions in the dispute. The redirection of the disputed domain names to the websites of Claimant’s competitors or to pornographic websites were acts of bad faith by Respondent. However, Paragraph 4.a.(iii) requires that the domain name “has been registered and is being used in bad faith” (emphasis added).

Essentially, there occurred mutual goading, something like a temper tantrum by the Respondent, but the Complainant offered no evidence that the Respondent registered the domain name in bad faith. Bad faith in the conjunctive is a feature of the UDRP. In the first decided decision, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D99-0001 (WIPO January 14, 2000) the Panel made the point clearly (which has been under recent pressure) 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. [ICANN] 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.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com