Abusive registration of a disputed domain name presupposes past and present acts by the respondent inimical to the complainant’s trademark rights. Obvious examples are appropriations of well known or famous trademarks to capture Internet traffic for commercial gain. President and Fellows of Harvard College v. Domains By Proxy, Inc., Online Property LLC., D2010-0263 (WIPO May 3, 2010) (<harvardonline.com>). But lesser known trademarks are also targeted. Paragraph 4(b) of the Policy introduces the elements for satisfying the requirement of bad faith under paragraph 4(a)(iii). It reads: “For the purposes of Paragraph 4(a)(iii), the following circumstances [set forth in the subdivisions of the paragraph], 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). Acts past or present all involve the respondent taking advantage of the complainant or its trademark. Contrast with trademarks that have current reputation, but none when the domain name was registered, Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010); or only regionally known, CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010). Application of the paragraph comes into play when the respondent fails to marshal a defense for rights or legitimate interests in the disputed domain name. The four listed circumstances of bad faith do not presume to cover the universe of bad faith.

Panelists early concluded that the four listed circumstances are “intended to be illustrative, rather than exclusive.” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). “[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [paragraph 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.” Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO March 7, 2000). Unidentified are other abusive practices covered under the catchall phrase “in particular but without limitation.” This may include, among other practices, imitating complainant’s website and pretending to be the trademark holder for phishing expeditions and hijacking domain names and fraudulently transferring them to new Registrars and Registrants. “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 the four examples of bad faith the Panel can rule on the “totality of circumstances.” Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000). “Additional factors can also be used to support findings of bad faith beyond those enumerated.” Wendy Ida v. Farid Azam, FA0901001240643 (Nat. Arb. Forum February 27, 2009). An example of bad faith registration and use “is not a limitation.” Mattel, Inc. v. Unknown c/o Dora Marks, FA0506000490083 (Nat. Arb. Forum July 11, 2005).

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 for a particular purpose. Past and present tenses are discussed by the Panel inTrade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009). 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.

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