It is seen as a deficiency by some that a complainant is remediless under the UDRP for blatant bad faith use of a domain name registered in good faith. There have been a number of interpretative suggestions to rationalize a construction of the Policy to circumvent the paragraph 4(a)(ii) requirement for bad faith in the conjunctive. None of these constructions has gained any serious support. In RapidShare AG and Christian Schmid v. The holder of the domain name rapidshare.net, D2010-0598 (WIPO July 9, 2010) the 3-member Panel held that it “must apply the UDRP as it is, not as the Panel thinks it should be.”

The wistful coda to the sentence, “it should be” is an acknowledgment that the UDRP cannot reach as far as country code policies or of the Anticybersquatting Consumer Protection Act that require proof in the disjunctive. Bad faith use is a legal basis for forfeiture. “If, as the Panel suspects, the Respondent’s present use began only after the Complainant’s use became widely known, it could be inferred that this use has not been in connection with a bona fide offering of goods or services, but rather that it has been in bad faith to divert Internet users seeking the Complainant’s website.”

Under the UDRP the complainant succeeds only by showing bad faith in the conjunctive, “as cumulative conditions which must both be satisfied for a complaint to succeed.” The RapidShare Panel made it clear (whatever its preference for a different outcome) that is was following precedent. It adopted the reasoning of three recent cases that forcefully rejected a unitary construction of the Policy, Camon S.p.A. v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010), Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, D2010-0470 (WIPO May 19, 2010), and Editions Milan v. Secureplus, Inc., D2010-0606 (WIPO ). The Panel in Camon noted that

This Panel is concerned that if panelists develop their interpretation of the Policy as they go along to meet the needs of trade mark owners who are suffering at the hands of domain name registrants, a stage will be reached where they will be acting beyond their remit. At some stage the issue must be a matter for the legislators and not the panelists. The Panel is concerned that that stage is very close at hand.

A transferee, of course, is answerable for its own conduct, so that from bad faith use bad faith registration can be inferred. In RapidShare there is an apparent discrepancy raising “some doubt as to whether there may have been a transfer since the Domain Name was originally registered.” However, “the Complainants must prove their case, as the UDRP specifies in its paragraph 4(a). The Complainants have not asserted, let alone substantiated, that the Domain Name has been transferred in bad faith.” Had there been an intermediary transfer, the result would have been different, based on the theory that transfer=new registration.

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