Granting, authorizing or acquiescing in another’s use of one’s trademark as a domain name is generally fatal to a claim for a UDRP remedy to recapture it. Representative of this fatality is Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach, FA0805001191122 (Nat. Arb. Forum July 22, 2008) (<ivanko.com”). The Complainant admitted that the Respondent had been authorized to register <ivanko.com> to sell Complainant’s goods, but argued that its agreement with the Respondent had expired and that it was bad faith for it to retain the domain name. A variety of unpersuasive arguments ranging from breach of contract to fraud have been made to prove bad faith, but complainants are unable to overcome the conundrum that if the respondent registered the disputed domain name with approval it could not have been registered in bad faith. The only argument favoring transfer is where the parties’ agreement expressly provides that upon termination of the respondent’s right it must relinquish ownership of the domain name to the trademark owner. Thus, the Panel in C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., D2004-0466 (WIPO August 27, 2004) held that there is a presumption that any right to use Complainant’s trade mark that Respondent may have been granted, has been granted as a result of, and on the condition that the parties remain in a business relationship, and that such right is no longer valid when the business relationship between the parties is terminated.
The only other circumstance warranting transfer of the disputed domain name is with employees and agents who register domain names for their employers, but place the registration in their own names.
Rights or legitimate interests allegedly secured by approval or acquiescence can be divided into three groups. First, are those circumstances in which the respondent used or failed to use the mark in accordance with contractual guidelines; second, are those circumstances in which the respondent’s right to use the domain name is terminated or has expired, UVA Solar GmbH & Co K.G .v. Mads Kragh, D2001-0373 (WIPO May 7, 2001); and, third are circumstances in which the complainant lacked guidelines at the time the disputed domain name was registered, Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, D2004-0426 (WIPO August 5, 2004).
The first two types of case pose a question as to whether bad faith registration can be inferred from a subsequent breach of conditions or change in status? The decisions are not unanimous on this issue. At one end is UVA Solar, supra. (no right or legitimate interest and bad faith); at the other end is The Motley Fool Inc. v. Domain Works, Inc., D2006-1625 (WIPO) (no right or legitimate interest and good faith). In a distributorship case, the Panel in Jerome Stevens Pharmaceuticals Inc v Watson Pharmaceuticals, D2003-1029 (WIPO March 26, 2004) stated that “if one had a legitimate use at one point, yet no longer is legitimately using the domain name, the Policy doesn’t prohibit a finding of no legitimate use pursuant to paragraph 4(a)(ii).” Nevertheless, the disputed domain name was registered in good faith and this was sufficient to defeat its forfeiture to the Complainant.
The different views illustrate one of the principles of domain name jurisprudence: a complainant may succeed on the ¶4(a)(ii) test and fail the ¶4(a)(iii)/4(b) test. A more borderline situation is illustrated in Safiag Lepeltier Demarchi and Assurexia v. Salesrep, D2007‑0382 (WIPO May 16, 2007). In denying the complaint, the Panel found that the Respondent acted as the Complainants’ Internet service provider. For this reason, “it is not surprising and not indicative of bad faith that the DNSs were those of the Respondent and that the Respondent was listed as the administrative and technical contact.”
Whether or not a license expressly provides for relinquishment of the domain name upon termination, there are one of three possibilities: either 1) the dispute is outside the jurisdiction of the UDRP, a contract breach, trademark infringement or business tort; 2) the complainant cannot satisfy its ¶4(a)(iii) burden of bad faith registration, Safiag Lepeltier and Miss Universe L.P., LLLP v. A Visual Group, D2005-0738 (WIPO August29, 2005); or 3) the claim is accepted for arbitration under the Policy with a positive result for the complainant, Ward Burton v. Athlete Direct, FA 100652 (Nat. Arb. Forum December 7, 2001) (broken business relationship between complainant and respondent) (Respondent defaulted; Transfer granted).
Complaints against former employees and agent cases have been found within the scope of the Policy. Representative of these cases is Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO December 19, 2000), in which the Panel held that the Respondent cannot find safe harbor for “unlawful activities.” Other cases on point include In William Hill Org. Ltd. v. Fulfillment Mgmt. Servs. Ltd., D2000-0826 (WIPO September 17, 2000) and Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO December 12, 2000) in which the Respondents, former employees of Complainants registered company names as domain names. The Panel in William Hill inferred that Respondent’s
interest was to deprive the complainant of the opportunity to reflect its mark in that name until the registration expires.
Similarly, Cricket Technologies, LLC v. Martin a/k/a Cricket Technologies LLC, FA 311353 (Nat. Arb. Forum September 27, 2004) (<crickettechnologies.com>). The Respondent refused to transfer the domain name upon termination of his employment. The Panel held that when employee registers the domain name within the scope of employment, his act of registering it in his individual name and contact information was evidence that he registered and used the domain name in bad faith.
The question remains open, however, and determinable under the ACPA, whether a respondent would be entitled to keep the domain name following his termination as an approved distributor of a complainant's good or services. In Ivanko Barbell the panel did not have to reach a decision on this point given the lack of bad faith registration.