There is a notion that a respondent adjudicated as having a legitimate interest in a disputed domain name can be exposed in the future if it changes its content to take advantage of the complainant’s trademark. There is disagreement on the issue (the Octogen line of cases and variants of that thinking), but the consensus is that bad faith use following good faith registration is not abusive as the Policy is presently constituted. There is no exposure to the original registrant without an amendment to the Policy.
Nevertheless, the notion is by no means resolved. It is directly challenged in a Separate Opinion (concurring in the result to deny the complaint) in Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com, D2010-0228 (WIPO June 25, 2010). The challenged statement by the majority reads: “if Respondent in the future used the Domain Name at issue to resolve to a web site which targeted Complainant’s trademarketed services, then Complainant would presumably be entitled to bring another UDRP proceeding on that basis.” The statement is clearly not necessary for the holding, thus theoretically is no more than dictum. Nevertheless, even as dictum it exceeds the Panel’s authority (says the separate Panel):
This Panel does not agree … for two reasons. First, the Panel has no power under the Policy to give directions on future conduct and its powers are limited to ordering transfer, cancellation or denying the relief sought. Secondly, the statement concerned is open to the interpretation that such targeting, after registration, would mean that the domain name had been registered and used in bad faith, but the fact must show in the words of the Policy, both that the domain name was registered in bad faith and that it has been used in bad faith. Such determinations on matters of fact can only be made when the facts are known.
There have been a scattering of decisions in which Panels have either implicitly suggested that the complainant can return, Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft, FA1005001324718 (Nat. Arb. Forum June 15, 2010) (in which the Panel ended his ruling with the statement that it was “without prejudice”); explicitly invited complainants to refile if in the future the respondent crosses the line, Cluett, Peabody & Co., Inc. v. Sanford Bus. Writing Serv., FA 95842 (Nat. Arb. Forum December 12, 2000) (the panel allowed a complaint to be refiled because the previous Panel had “expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name in issue”) ; or to correct a deficiency in pleading, Jones Apparel Group Inc. v. Jones Apparel Group.com, D2001-1041 (WIPO October 16, 2001) (refiling allowed because the previous panelist gave the “green light in the clearest possible way to refiling the Complaint to correct [the previous Complaint’s omissions].”
Complainants whose trademarks consist of common words alone or in combination with other common words cannot claim the highest protection unless there is dispositive proof that the trademarks preceded the domain names and the domain names are being used to target the complainants’ trademarks. The disputed domain name in Charter Communications is <charterbusiness.com> which is identical to the Complainant’s present trademark. But, when the domain name was registered the Complainant’s trademark was CHARTER DIGITAL CABLE and CHARTER COMMUNICATIONS. The majority deferred the question of rights or legitimate interests and folded its conclusion into the bad faith analysis, which it found in Respondent’s favor.
Under the terms of the Policy currently in effect and the consensus construction of it the only basis to support refiling a claim (rare against the same respondent unless a pending trademark application has advanced to a certificate of registration) is if the domain name registration has changed to a new respondent.
Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com