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UDRP Does Not Apply To Bad Faith Domain Name Renewals: Part I

The purpose of the Uniform Dispute Resolution Policy, known as the UDRP (hereafter the “Policy”), is to determine disputes relating to the registration or acquisition of domain names in bad faith. To succeed in a UDRP action (i.e. to obtain cancellation or transfer of the disputed domain name) it is necessary for the party bringing the complaint (the complainant) to show that (i) the disputed domain name is identical with or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the domain name holder (known as the respondent) has no right or legitimate interest in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. Each of the aforesaid three elements must be proved by the complainant to warrant relief.

A serious problem may arise for the complainant if the disputed domain name had been registered in good faith, but was renewed and was being used in bad faith. The cause of this problem lies in the fact that the Policy speaks only in terms of “registration” and “use” and not in terms of “maintaining” or “renewing” the domain name registration. Furthermore, panels have always strictly maintained the conjunctive requirements for the complainant to prove that the domain name in issue had been registered and was being used in bad faith:

“It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use.” (WIPO administrative panel decision of 14 January 2000, Case No. 99-0001, World Wrestling Federation Entertainment, Inc. v. Michael Bosman).

Accordingly, how can the complainant satisfy the bad faith requirement in such a context? Can the renewal of a domain name registration made in bad faith convert a name originally registered in good faith to a name registered in bad faith for the purpose of the Policy?

A clue to the answer can be found in the Report of the World Intellectual Property Organization (WIPO) Internet Domain Name Process, which stresses that the Report was not intended to extend the definition of abusive registration to include domain names originally registered in good faith. Indeed, paragraph 197 of the Report reads as follows:

“The WIPO Interim Report recommended that a time bar to the bringing of claims in respect of domain names (for example, a bar on claims where the domain name registration has been unchallenged for a designated period of years) should not be introduced. It was considered that such a measure would not take into account that the underlying use of a domain name may evolve over time (with the consequence that the use of a domain name may become infringing through, for example, the offering for sale of goods of a different sort to those previously offered on the website); that any related intellectual property rights held by the domain name holder may lapse; and that a time bar would in any event be undesirable in cases of bad faith”.

Read in conjunction with paragraph 198 of this report, it is clear that the reference in paragraph 197 to “infringing” was intended to apply to the wider category of trademark infringement, not to the narrow category of abusive registration. The question whether domain names registered in good faith can become infringing is outside the scope of this inquiry.

The Policy, which was based on the above report, sets out examples of behaviour that constitutes bad faith holding of a domain name:

  • the disputed domain name was registered or was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
  • the disputed domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct; or
  • the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
  • by using the disputed domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

All of these examples relate to the registration and/or use of a domain name only. The Policy could have been drafted to address both bad faith registration and renewal. It does not do so, referring only to a registration having been obtained in bad faith.

Consequently, panels, who are bound to apply the Policy strictly, have always refused to take into consideration the renewal of the domain name registration in the process of making their decisions.

The second part of this article will discuss UDRP cases involving the renewal of domain name registrations.

By Philippe Rodhain, Intellectual Property Lawyer

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