“A proceeding under the Policy is not an assessment of civil trademark infringement,” Ni Insan Kaynaklari Personel ve Danismanlik Limited Sti v. Timothy Michael Bright, D2009-0315 (WIPO May 7, 2009). Rather, the UDRP is jurisdictionally limited to determining whether a respondent’s registration of a domain name incorporating (in whole or in part) a complainant’s trademark is abusive. However, while the proceeding is not a trademark court an order cancelling or transferring a domain name is nevertheless a judgment that respondent infringed the complainant’s trademark rights. The same Panel also stated that “[a]n administrative proceeding under the Policy is not a proceeding in ‘equity’ in which a panel seeks to generally determine whether one party or another has acted more or less fairly toward the other, thereafter fashioning a ‘just’ remedy.”

This is not to imply that granting or denying relief is not “just,” but the remedy or exoneration has to be earned by adherence to the evidentiary standards demanded by the Policy as construed and settled in past decisions. The Policy expressly states that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” Rule 10(b). Justness in weighing rights or legitimate interests and determining bad faith is particularly important for a jurisprudence that authorizes the arbitrator to order a domain name forfeited to the complaining party. Unpredictability and inconsistency do not encourage confidence of fairness. ICANN panelists early recognized that UDRP should not be a roulette wheel; that they should aim for a high degree of consistency (which is the basis for predictability).

The goal is achieved through “a strong body of precedent” which “is strongly persuasive” even if not binding, Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010). For claims within the Policy’s jurisdiction Panels have emphasized that decisions “should consist of more than, ‘It depends [on] what panelist you draw’,” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>). (Aspirations are not always met!) “Whether [the consensus in holding that a respondent in the domain name business] is justified may be a matter for debate, but in the opinion of the Panel there is a strong body of precedent which, though not binding, is strongly persuasive,” Pantaloon.

The “strong body of precedent” acts as a control. This has been amply illustrated in the ongoing debate over construing the Policy more in favor of the trademark holder where the domain name is being used in bad faith although registered in good faith. It serves to emphasize the self-imposed limitations of the Policy. A judgment under the UDRP is dictated by its own jurisprudence; there must be proof of both registration and use in bad faith; a finding of the latter does not meet the requirements of the former.

In a number of recent cases complainant’s claims were denied (even where there was egregious bad faith use) which in a trademark forum would likely have (and in some actions has) yielded a different result. In PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004) the Panel elected reluctantly to follow precedent, but noted his reservations about the “traditional approach.” In making his finding

the Panel wishes to clarify that its decision under this element is based on the need for consistency and comity in domain name dispute ‘jurisprudence’…. The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired” (emphasis added).

Panelists concur that “refreshing” is not equivalent to a new registration. But, transfer is. Hence, under the UDRP (but not the ACPA) egregious bad faith use is not actionable.

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