I am returning to this issue of “retroactive bad faith” because it is beginning to receive attention from a number of panelists. It represents a new construction of the Policy that conflates the “and” and “or” of paragraph 4(a)(iii) so that bad faith registration rests on the respondent’s present use of the domain name where use has changed over time to infringe the complainant’s rights. It was first announced in City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) (complaint denied) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009) (transfer granted). Essentially, “retroactive bad faith” holds the respondent to its representation and warranty for any subsequent (not only to its initial) use of the domain name. A change of use to take advantage of the complainant or its trademark supports a finding of abusive registration.

The Panel in Fundação CPqD – Centro de Pesquisa e Desenvolvimento em Telecomunicações v. Gary Lam. D2009-1403 (WIPO November 27, 2009) acknowledged the new construction, but concluded that since the Complainant “has not put its case in that fashion and the facts of this case are such that the adoption of a more conventional approach leads to a decision in the Complainant’s favour … [t]his is an argument and discussion to be left for another day.” Leaving the argument “for another day” was not the view of the Panel in Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December 3, 2009) <wifiparis.com>).

The prevailing construction of the Policy – the one that respondents have come to expect – gives the original respondent a pass, but nails the transferee. This is illustrated in HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (<creditkeeper.com> ) and even more tellingly in Daimler AG v. William Wood, D2008-1712 (WIPO February 25, 2009) a re-filing of the complaint – tellingly because the Respondent’s predecessor, its partner in the Internet business claimed that the change of registration was not really a transfer but intra-partnership. However, the point in both Daimler (conventional approach) and Octogen is that the websites changed over time; they may have started in good faith, but they metamorphosed to infringing.

If “retroactive bad faith” takes hold – if it is not a dead end – it represents an entirely new direction for assessing abusive registration. It means that the respondent either sticks to its original purpose or is called to account. It is more the model of the Anticybersquatting Consumer Protection Act which is less forgiving than the UDRP. The question is, Why is the new construction being offered at this time? It is, I think, a response to respondents changing course adventitiously and believing that as original registrants they are protected from forfeiture. The new construction puts respondents on notice that this is no longer an acceptable model even if they were the first to register a term subsequently found to be identical or confusingly similar to a newly acquired trademark.