Paragraph 4(b) of the Policy comes into play when the respondent fails to marshal a defense for rights or legitimate interests in the disputed domain name. It reads: “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith…” (Emphasis added). The four particular circumstances listed do not presume to cover the universe of bad faith. They are “intended to be illustrative, rather than exclusive,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Unidentified are other abusive practices covered under the catchall phrase “in particular but without limitation.” “It does not matter that the facts … may not fall within any of the circumstances described at paragraph 4(b) of the Policy,” Fox News Network, LLC v. Sam Solomon, D2005-0022 (WIPO March 25, 2005). If not any one of those examples the Panel can rule on the “totality of circumstances,” Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000). The presence of circumstances, listed or otherwise, is “evidence” (not necessarily conclusive) of bad faith. This construction is compelled by the language in paragraph 4(a)(ii) of the Policy which requires proof in the conjunctive of registration and use. There is a hierarchy of acts, more or less egregious, the less being unpersuasive of bad faith. An example of this was noted in yesterday’s case, Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010) which had a link on its webpage to competitors of complainant.

Defined most broadly bad faith is registering a domain name identical or confusingly similar to a complainant’s trademark and using (or holding) it to gain an economic advantage. A respondent can be shown to lack rights or legitimate interests in the disputed domain name but still not to have registered the domain name in bad faith. Of the four listed examples of bad faith the first three are written in the past tense and focus on the respondent’s intention in registering the domain name: “you have registered the domain name” primarily for purposes inimical to the complainant’s interests and its rights. From the evidence is to be inferred the intention.

In contrast, the fourth example of bad faith [paragraph 4(b)(iv)], is written in the present tense, but implies a continuum of (if not current) predatory conduct in using the domain name. Other abusive practices generally concern the use of the domain name, such as phishing for example, or if registration, illicit transfer by hacking the registrar’s database or pretending to be the trademark holder. In one sense, the conjunctive requirement under paragraph 4(a)(iii) can be satisfied without separate proof of registration and use. To have registered the domain name for ransom (for example) satisfies the conjunctive requirement regardless whether there is an active website. Whether active or not the respondent’s conduct violates paragraph 4(a)(iii) of the Policy. Some panelists have taken the phrase “evidence of the registration and use” in combination with paragraph 4(b)(iv) to mean that the very fact of bad faith use – the facts not otherwise in contradiction – presupposes or infers bad faith registration. Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009).

In most instances, the Panel analyzes the facts of use first to determine whether the record is sufficient from which to infer registration in bad faith. There is no per se rule. In the line of cases stemming from Octogen bad faith use warrants a finding of abusive registration, but this construction has not found any significant support and is being criticized in a number of recent decisions, BioClin B.V v. MG USA, D2010-0046 (WIPO March 22, 2010) and Camon S.p.A. v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010). The BioClin decision will be discussed in a later Note because in denying the complaint the Panel incidentally highlights the difference between the evidentiary demands under the UDRP and those under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125 (d) for injunctive and legal remedies for trademark infringement.

Gerald M. Levine <udrpcommentaries.com>