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Dismissal of UDRP Complaint

Ordinarily, complaints are dismissed for two reasons (or the same reason but expressed in two different ways): either the complainant fails to prove respondent registered the domain name in bad faith (although respondent has no right or legitimate interest in it); or respondent rebuts bad faith registration even though it may be using the domain name in bad faith. In a number of cases Panels have dismissed complaints without prejudice because they are “not in a position to render a decision regarding [any] … future prospect.” 4chan, LLC v. Oversee Domain Management, LLC, D2014-0484 (WIPO August 6, 2014). This happens, for example, where the domain name composed of a dictionary word or descriptive phrase registered after complainant acquired the trademark is passively held. 4chan illustrates a different reason for denying the complaint where there is insufficient proof of bad faith registration but there may be against a transferee.

The factual circumstances in 4chan are unusual. Respondent in 4chan alleged it had sold its assets to a third party, but the domain name had not yet been transferred because it had already been “”locked” by the registrar. This suggests possible cyberflight which is governed by paragraphs 8(a) and 8(b) of the Policy but the facts did not support bad faith registration:

While the Panel was and is prepared to conclude that Complainant established some unregistered or common law service mark rights as early as October 1, 2003, it is not prepared to impose a duty on Respondent to have been aware of those rights as of that early date. Complainant did not apply for service mark registration until March 5, 2013, almost 10 years following the establishment of its bulletin board website…. For the Panel, it stretches too far the concepts of constructive or implied notice of rights to impose a duty on Respondent to have been aware of a claim of common law rights that, in the Panel’s view, would not have been clear from viewing Complainant’s October 2003 bulletin board pages.

According to the Respondent, the asset sale “requires the Panel to make a determination as to whether the sale and transfer of the disputed domain name between owners constitutes a new registration within the meaning of the Policy, and if so what the consequences of that new registration are in respect to Respondent’s legal posture as new registrant.” However, the Panel declined the invitation.

The Panel held that it “does not consider the issue of whether there has been a new registration to be raised in a way that is relevant to a determination in this proceeding.” This follows because it “does not believe that ex post facto transfer of ownership should affect its assessment of facts that preceded that transfer of ownership…. Whether or not parties may have elected to exchange beneficial interests outside the formal context of registration is not relevant to the determination of the Panel.”

However, not being able “to transfer registration of the disputed domain name until this proceeding is resolved creates a somewhat problematic situation,” namely that Complainant will have to start all over against the transferee if the facts warrant a new complaint. Thus, although the Panel held that it was not in “a position to render a decision regarding such a future prospect” it made a point of stating that its “decision is without prejudice to initiation of a new complaint.”

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