Yesterday in a decision a sole panelist had some interesting words about the WIPO decisions:

“””This Panel is concerned that if panelists develop their interpretation of the Policy as they go along to meet the needs of trademark owners who are suffering at the hands of domain name registrants, a stage will be reached where they will be acting beyond their remit. At some stage the issue must be a matter for the legislators and not the panelists. The Panel is concerned that that stage is very close at hand.”””

Yes Sir.

The case involved the domain walkydogusa.com.

The case is pretty long on the facts and there is a history between the trademark holder and the domain name.  The dispute was really not appropriate for a UDRP and the Trademark holder should have filed a suit to get the matter resolved.  So the issues of the case and its outcome is of no interest to me.

However the discussion in decision is what interests me and the discussion is about bad faith again.

Its the And or Or Argument and when is bad faith determined at registration or can bad faith be found only by subsequent use.

“”The fundamental question that arises for determination can be stated simply: does the absence of bad faith intent by the respondent at the time of acquisition of the disputed domain name inevitably preclude the complainant from succeeding under the Policy, even though the respondent has subsequently used the domain name in bad faith? In this Panel’s view, the answer to that question is provided by the express terms of the Policy itself, and that answer is “no”. “”

“some recent decisions have expressly espoused the idea that subsequent bad faith use may, in certain circumstances, support a finding of bad faith registration; or, as some other Panels have put it, the idea that 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.

These cases, starting with the Octogen trio of cases in mid-2009, rely heavily on the approach taken by the panellist in Telstra as authority for the proposition that in certain circumstances a domain name may be deemed to have been registered and used in bad faith even though the registration was not in bad faith.

“”For this Panel, the adoption of paragraph 4(b)(iv) as a deeming provision on the basis of an analysis of the Telstra decision (supra) is unsatisfactory. This Panel has always regarded Telstra as authority for the proposition that proof of both bad faith registration and bad faith use is necessary for a complaint under the Policy to succeed. What else could the panellist in Telstra have meant when he said in paragraph 7.6 of that decision:

“So understood, it can be seen that the requirement in paragraph 4(a)(iii) that the domain name “has been registered and is being used in bad faith” will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.”?

“”It is to be noted that the placing of the ‘and’ in italics was done by the panelist in that case and was done presumably to emphasise the importance of the word.”

“”However, the Telstra panelist is also the author of the Paris de Ville decision in which he summarises the position thus:

“In summary, it seems clear to this Panel that the intent and effect of the Policy is that the requirement of Paragraph 4(a)(iii) can, in certain circumstances, be met where the respondent has used the domain name in bad faith even though it may have been acquired in good faith. As the Telstra decision states, “the relevant issue is … whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”.”

“”How can those two seemingly contradictory quotations from the same panelist be reconciled? Whence does the final sentence in the last quote come? It does indeed come from his Telstra decision, but the full quotation reads:

“””The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”

As to (b), in Octogen the learned panelist said:

“A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.”

“””To this Panel, the principal difficulty with this reasoning is that, although the warranty was given “as of” the time of registration, a breach of warranty will not be taken to have occurred at the time the agreement containing the warranty was made unless there is to be found a deeming provision to that effect. In the absence of such a provision the breach of warranty will be taken to have occurred when the conduct constituting the breach took place. There is no provision in the warranty itself which deems any breach to have retroactive effect. Thus it is necessary to find a deeming provision elsewhere in the Policy if the idea of finding “retroactive” bad faith registration by reason of breach of warranty is to be supported.”

“””This Panel finds it helpful to keep in mind the evidence of Francis Gurry (then WIPO Deputy Director General and Legal Counsel) given to a subcommittee of the Committee on the Judiciary United States House of Representatives on July 28, 1999 just prior to the time the Policy was originally adopted:”

“ …. the WIPO Report adopts a minimalist approach to the issues that were addressed in the WIPO Process. The recommendations of the Report deal only with the most urgent and most obvious problems, while recognizing that other problems and issues exist that might usefully, in the course of time and with the benefit of experience gained from the implementation of the recommendations of the Report, also be addressed.””

“”The WIPO Report found ample evidence that a significant problem exists as a result of the intersection of, on the one hand, the largely privately administered and globally accessible domain name system and, on the other hand, the publicly administered and territorially based intellectual property rights system. The most egregious manifestation of this problem is the exploitation in bad faith of the ease and simplicity of obtaining a domain name registration in order to register, as a domain name, the trademark of another person with a view to extracting a premium from the owner of the mark. “”

“”Significantly, throughout the whole of the WIPO Process, not one voice defended this practice, which is known commonly as cybersquatting. The practice was universally condemned.”

“”The need to bear in mind that the Policy is (or at least was, at the time of its original recommendation by WIPO and adoption by ICANN) deliberately limited in scope and was not then intended to cover anything other than a very narrow category of disputes has been taken up by a number of panels such as the majority in e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party &Cupcake Movies (supra):””

“These assertions demonstrate Respondent’s contempt for truth and fair dealing. Nonetheless, the Policy is deliberately limited in scope and, accordingly, unable to address all instances of domain name misuse. Any changes, whether to the conjunctive ‘registration and use’ requirement, to the definition of bad faith that does not account for bad faith towards the Internet community as a whole, or to the creation of an equitable rule allowing Panels to rule against a party based on abuse of the Policy and Rules, would have to be publicly debated and formally adopted by ICANN.”

“”This Panel does not believe that it was ever contemplated by those responsible for introducing the Policy that the Policy would be interpreted to deal with domain names registered in good faith.””

“”To this Panel that then leads on to a consideration of whether, given the intended scope of the Policy, interpretation of the Policy should be flexible to take account of developments in the marketplace. The Panel in Paris de Ville is seemingly in favour. He talked of the Octogen interpretation as “a logical and incremental evolution of panel thinking in light of broader developments within the domain name system”. The panelist in the PAA Laboratories case, on the other hand, with reluctance deferred to the consensus view (in relation to paragraph 2 and renewals):

“In making its finding, the Panel wishes to clarify that its decision under this element is based on the need for consistency and comity in domain name dispute “jurisprudence”. Were it not for the persuasive force of the cited decisions, this Panel would have expressed the view that paragraph 2 of the Policy demonstrates that references to “registration” in the Policy were probably intended to be references to “registration or renewal of registration.” Absent the consistency of approach which has found favour with numerous earlier panels, this Panel would have seen no good reason for a renewal not to be considered as equivalent to “registration” in the context of the objectives of the Policy.”

In Teradyne Inc. v. 4tel Technology, WIPO Case No. D2000-0026, the panelist took the view that a domain name registered in good faith was not a topic fit for the Policy, but something which should be left to either ICANN or the courts:

“The question whether domain names registered in good faith become infringing is outside the scope of this inquiry. Further support for this interpretation is contained in the example of “bad faith” contained in ‘ 4(b)(i) of the Policy, which contemplates that the domain name must have been registered or acquired “primarily for the purpose of selling, renting or otherwise transferring” the domain name. In this case, it is clear that the domain name was not registered or acquired for this purpose. This Panel is not ready to extend the Policy to cover cases clearly intended to be outside its scope. That is a task for ICANN, or for the courts.”

While noting that the Terradyne supra) approach has recently been the subject of some reappraisal by panelists in cases such as Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688, this Panel is of the view that the reference to ICANN is a recognition that if the Policy is to be extended to cover matters not within its scope, that is a matter for the legislators not the panelists.

The problem is, however, that amendment of the Policy to address some of the more pressing issues, which arguably the Policy was not designed to cover, is unlikely in the foreseeable future.

“””It is also conceivable that any amendment process undertaken in the current context (especially one in which there remains considerable uncertainty as to the form of any new mechanisms that may operate within ICANN’s envisaged new gTLD programme) may (however well intentioned) risk opening a pandora’s box of uncertainties about the very instrument (the Policy) which has on the whole proved its value and stability over the course of the past decade. It is these factors which have no doubt prompted much of the re-thinking by panelists concerned to ensure the continuing relevance of the Policy as an instrument responsive to market developments and domain name registration realities. For this Panel, however, such laudible objectives do not justify for their solution removal of the conjunctive requirement, which has hitherto represented such a fundamental pillar of the Policy”””.

Nice discussion.

The panelist discussed this issue in great detail and the inconsistent decisions on the issue of bad faith.

You can see he wants to apply the policy the way it is written.

Intelligent well thought out decision.