In a WIPO decision a sole panelist took away a domain registered by the domain holder in 1997, that’s 13 years ago.
The domain at issue is sporto.com
Over the years, the domain has been used many different ways including as a developed site but also for a period of time as a parked page.
This case again turned on the bad faith issue.
The policy on bad faith is pretty clearly written:
“””C. Registered and Used in Bad Faith
“”Paragraph 4(a)(iii) of the Policy reads as follows:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(iii) your domain name has been registered AND is being used in bad faith.”
However this becomes another panel that interprets the work “And” as “or” and wants to judge “Bad Faith” not only at the time of registration but each year at the time of renewal:
“”Until last year Respondent’s pre-2008 use of the disputed domain name may have established a defense to the charge of no rights or legitimate interest”
“However this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future.”
“”in this Panel’s view bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder, just as bad faith use can occur without regard to the fact that the domain name at issue has not been (or has been ‘passively’) used.”
“”Registrant provides his undertaking “By applying to register a domain name, or by asking [a registrar] to maintain or renew a domain name registration.”
“”Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?
“Consensus view: While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.”
“Here, at the time of its most recent renewal last year Respondent’s use of the disputed domain name had become prototypical cybersquatting and in no way related to any of Respondent’s businesses. The change came about not through intervening circumstances unrelated to Respondent’s prior good faith use but by Respondent’s conscious choice to change website content.”
“To summarize, in this Panel’s assessment:”
“Respondent intentionally changed its use of the disputed domain name.
“The new use is unrelated to Respondent’s earlier business.
“The new use is textbook cybersquatting.
“The new use occurred prior to the renewal held to be a registration.
“There has been no legitimate use since renewal.”
“The Panel deems Respondent’s 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith for purposes of paragraph 4(a)(iii), and finds that the Respondent registered and used the disputed domain name in bad faith. The Panel further finds that Respondent’s use of it to redirect to a website that includes hyperlinks to Complainant’s competitors not legitimate under paragraph 4(a)(ii).””
You got to read this part of the opinion:
“”The UDRP does not operate on a strict doctrine of precedent. However panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations.”
“This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties”
How can inconsistent opinions be fair effective and predictable. for anyone?
If the UDRP does not operate on a doctrine of precedent which we have noted many times in the past, then there is no consistence and it become unpredictable, as we have called it a crap shoot.
At some point this issue of “And” Vs. “or” is going to have to be decided by a real court which does have to follow Precedent and can’t just make it up as they go like the UDRP panels seem to.
Outrageous. Another panelist trying to make what should be a court decision into a UDRP decision.
I’ve said it before & will say it again.
Domainers with valuable domains need to protect their assets by thinking like corporates ie. apply for a cheap Belelux TM in an unrelated class from potential complainant(s).
Then stick an “developed” site on it unrelated to complainant’s TM class.
Having a parking page these days is like having UDRP bullseye sign on the domain.
You will earn next to nothing on it compared to a parking page (with likely huge “confusion” traffic intended for complainant) – but in theory it’ll be safe from any UDRP…
Oh, and have enough money in reserve to take any BS UDRP decision up to a real court.
I feel bad for the domain owner. Plus, he doesn’t have a chance if he took it to federal court. He couldn’t win. And, the complainant probably can easily outspend him.
I’m already earning very little with PPC for prime and keyword domains.
In the near future, I can’t see domainers using PPC for a semi-valuable or prime domain.
PPC use to be – Low Risk, High Return.
Now it stands for – Low Return, High Risk.
Michael-
If I read Richard Lyons summary correctly (and I hope that I am wrong on this), there is a responsibility upon a registrant to review that a name is not infringing at the time they renew their domain name.
Is that your interpretation?
This might lead to some quick 9 year renewals, especially given VeriSign’s price hikes in July.
-Jothan
Well, the web-site is currently forwarding to PlanetShoes page selling Sporto branded products. This is a clear bad-faith. Or is it not?
Jothan
Yes that is how I read Mr. Lyon’s opinion and he is not the only panelist to have taken the word AND and interpreted it to mean OR thereby placing issue of bad faith back it issue at every renewal.
In my experience, the absolute worse (by far) WIPO panelist is M. Scott Donahey . It is my belief that this guy simply has no clue and has come to whacked conclusions that simply defy logic. I guess that common sense is not so common.
Brand
Your looking at the current situation and then trying to adapt the law into the result your looking for.
The issue the ruling flies in the fact of the clear reading of the rules at issue
If you want the rules to be changed that’s another matter.
Yeah …..it does look like blatant TM violation the way it is being directed to Planet Shoes, and the Sporto.com owner does look way guilty, but the manner this panelist came to this same conclusion is absurd.
I believe this is the most illogical statement I have heard from a panelist ever (paraphrased):
“The UDRP does not operate on a strict doctrine of precedent”……..”this ensures that the UDRP system operates in a fair, effective and predictable manner ….”
This panelist obviously did not use his or her head when he or she wrote this, and certainly did not read what was written after it was on the screen b/c that is just talking out both sides of your mouth. There is absolutely no meaning in that statement other than “I do what I want when judging you”.
Thank you for bringing this to our attention.
Puckett
Exactly.
When I went to law school (yes it was some time ago) I learned that we operate under a set of uniform rules and laws, applied equally with prior decisions gien much weight and respect.
Also I learned that case involving millions of dollars (that was a lot of money back then) turned on contract that used the words AND instead of OR.
Apparently I didn’t go to the same school as Mr. Lyon
Geez, don’t use your domain to promote a product of the exact name, even if the product comes out after you registered the domain. You’d think that would be common sense. So I take it sporto.com was being forwarded via an affiliate link to Planet Shoes? Really not smart.
Yikes. Everytime you park a domain you are rolling the dice on a TM violation. At this point I don’t think anyone can predict what a panel will say in terms of bad faith registration or legitimate business interest. Domain owners need to think of their domains as assets and protect them as such.
Cybersquatting is too hot an issue and universally reviled so that any gray areas are swept up in it. That is just the way it is.
The sad part is that the WIPO/UDRP process and case history is so disconnected to consistancy, that courts may end up invalidating it as an arbitration process all together.
“the word AND and interpreted it to mean OR”
That is the official NEW WIPO policy. Not an accident. This is something WIPO is forcing its panelists to follow. In short the rule is simple, if you want to remain a panelist, you must follow this new rule.
.. i wish i was making this shit up 🙁
The bottom line on this as I see it is that even if you have a domain that was registered originally before any trademark, but use it in later years to intentionally trade off of that trademark , you are going to lose it because your re-registration (renewal) acts as the trigger that WIPO will use to take it away.
Does that mean when I pay my annual property tax, I give up my rights if my property is grandfathered for some new zoning or construction requirements?
Howard
Following that line of reasoning there is safety in renewing domain, at least the most valuable ones for say 10 years at a time rather than annually
Mike
That’s certainly worth considering on the better traffic domains.
actually, following that line of reasoning, a TM that was applied for years after a domain would be able to take the domain in a UDRP proceeding even if it was NOT “being used” in an infringing manner. That is the scary thing…
Registration cannot equate to Renewal. Yet more complete bullshit from UDRP panelists.