There is a struggle going on in the community of UDRP panelists. One group of panelists would expand the circumstances for bad faith registration; they argue for a unified construction that eliminates the conjunctive requirement in those egregious circumstances in which respondents having speculated on dictionary words, common combinations or descriptive phrases which target later acquired trademarks that achieve wide marketplace currency. I have discussed this phenomenon in earlier Notes. The formative analysis was presented in a pair of cases from the same Panel, City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (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). He coined the phrase “retroactive bad faith.” This is one side of the argument.
A number of other panelists jumped on the new construction and an equal number have rejected the approach, preferring stare decisis, a Latin term meaning “ to abide by decided cases.” Courts aim for consistency; so should UDRP jurisprudence. That is the other side of the argument. The two sides are present in Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, D2010-0217 (WIPO June 1, 2010). The majority prefers continuity of construction. The dissent, the inventor of “retroactive bad faith” (the sole panelist on Octogen) is passionate for the new approach. While his argument was unpersuasive to the majority in Tata Communications, one member (the Presiding Panelist) was nevertheless ready to concede that circumstances may warrant a finding of bad faith registration based on a “willful blindness” analysis:
In making this finding [that the Respondent likely registered the disputed domain name because of its generic connotation], the Presiding Panelist, however, notes that he considers the issue of bad faith registration is more finely balanced. This is because that Panelist considers that the Policy does not necessarily preclude bad faith registration in circumstances where a respondent speculatively registers a domain name in the hope of exploiting some future trademark value it might have, in addition to any other value. Prior panels have allowed that, in certain circumstances, the registration of a domain name may be in bad faith even if the relevant trademark was registered subsequently.
This introduces a new thought that attempts to bridge the gap between what at first glance appears to be two irreconcilable constructions. “[T]hose ‘certain circumstances’ have concerned respondents who were clearly aware of the complainant in advance of the registration of its mark, [but] there is also substantial panel authority for the view that a respondent need not be specifically aware of a complainant when it registers a disputed domain name. ‘Willful blindness’ can be sufficient for a finding of registration in bad faith.”
Panelists in agreement that the expansion of business models must be countered by a new paradigm have suggested that a unified theory is supported by the language of the UDRP; and, if this is not acceptable, then bad faith registration should be assessed from the date of its renewal, Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010). There is clearly an attempt by the Presiding Panelist in Tata Communications to find the right jurisprudential language that will not offend precedent and is compatible with it.
“The majority” (as the dissent sees it) “apparently believes that it was the intent of the drafts persons of the Policy that a registrant is free to profit from the goodwill inherent in the trademark belonging to another and to mislead the public, so long as the registrant did not intend to do so at the time it registered the mark.” This construction (the dissent believes) fails to keep pace with monetizing models that undermine trademark law. The “Policy was created at a time when cybersquatters were individuals with one or a few domain names identical to trademarks who would attempt to sell the domain names to trademark owners.” In the beginning, “[t]here was no use of robots.txt, no parking or landing pages, no pay-per-click ads, no bulk registrations, no privacy services, no IDNs.”
The “purpose of trademark law is to prevent the public from being confused as to the source of goods and services with which the trademark is associated.” Hence the rationale for a “unitary, rather than binary, concept,” which means that bad faith use (which in Tata Communications all members of the Panel agree is evident) is conclusive of bad faith registration. There must be “flexibility to apply the Policy to situations that were never contemplated by the draft spersons.”
To what extent the dissent’s flexibility call will be answered is not entirely clear, but it can be argued that language to meet the challenge is being tested. This is evident from the Presiding Panelist’s (unusual) interjection (dicta) of his own thoughts “that the Policy does not necessarily preclude bad faith registration in circumstances where a respondent speculatively registers a domain name in the hope of exploiting some future trademark value it might have, in addition to any other value.”