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Uniform Domain Name Dispute Resolution Policy 5/2/2008 2:54:43 PM EST Bad Faith Requirements Under Two ADRs: UDRP and ukDRS Partner, Levine Samuel, LLP
The UDRP requires that the complainant prove both registration and use in bad faith [¶4(a)(iii)]. In contrast, country code ADRs take a different approach: one or the other, but not both. A couple of recent close decisions respectively under the UDRP and ukDRS (Nominet) are instructive in highlighting this point. Under the UDRP model, an inference of bad faith registration may be inferred from bad faith use under limited circumstance, for which typosquatters and pornographers are prime candidates. For other kinds of alleged abuse based, for example, on monetized web sites or competitors taking advantage of the complainant's trademark, Panels look at a combination of mostly circumstantial evidence and the respondent's conduct, to the extent that it can be adduced from the respondent’s explanations or defenses and the content of its website. Unlike the UDRP, under the ukDRS (and other Country code ADRs), the losing party has the right to an administrative appeal.
A three-member Panel over a vigorous dissent on the issue of bad faith registration in Deutsche Lufthansa AG v. Future Media Architects, Inc., FA0802001153492 (Nat. Arb. Forum April 17, 2008) ordered the domain name (<lh.com>) transferred to the Complainant. The decision received considerable adverse comment in concluding that the two-letter domain was abusive in targeting the Complainant’s trademark. For country code ADRs, a finding of good faith registration can still lead to the respondent forfeiting ownership of the domain name because the complainant only has to prove bad faith use. However, in MySpace, Inc. v. Total Web Solutions, DRS 04962, (Appeal Board, April 18, 2008) an order transferring the domain name to the complainant was reversed by an Expert Opinion decided January 14, 2008. The reversal essentially requires the Complainant to seek judicial relief in a U.K. court on the issue of ownership. A copy of the appeal decision can be viewed here.
In Deutsche Lufthansa, the dissent “doubt[ed] that Respondent was even aware of Complainant’s LH trademark when it acquired the domain name, and mere constructive notice of a trademark is insufficient under the Policy.” However, the majority invoked the principle of “totality of circumstances.” It held that the evidence, which included offering to rent or lease the domain name to the complainant as well as having competitor links on the webpage, preponderated in the Complainant's favor. Since no evidence is cited to support a finding of bad faith registration, the Panel must have inferred it from bad faith use. This decision may be giving the Complainant too much the benefit of the doubt, particularly since the proof did not appear to support LH as a famous trademark. Moreover, the majority stated a principle for which there is currently no consensus to be applied against domain owners engaged in “indiscriminate acquisition” of domain names. It held that
Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible. The traditional analyses of the rights to or legitimate interests element should not apply in gross when a registrant is not seeking to use any particular domain name to conduct business, is not otherwise known by that name, and has no interest in the nature of the transferor’s rights there from.
The principle that the “traditional analyses of the rights to or legitimate interests element” is superceded when the “business model involves the indiscriminate acquisition” of domain names will be tested in a court proceeding. The Respondent, Future Media Architects filed a complaint in the Southern District of New York under the Anticybersquatting Consumer Protection Act (ACPA) (15 U.S.C. §1125(d)), see here.
In MySpace, the respondent registered the domain name many years prior to the complainant acquiring a trademark right. Anterior registration would ordinarily be a complete defense under the UDRP model. However, the complaint alleged that after the respondent learned about the complainant's business plans it changed its webpage to take advantage of the complainant's notoriety, thus supporting a claim of bad faith use. However, a unanimous Panel on appeal did not believe that there was sufficient evidence from which to draw that inference and decided that the Respondent was entitled to keep ownership of the domain name.
Ordinarily, the UDRP model gives the respondent more evidential room to prove its right to retain the disputed domain name and the ukDRS less. In these two cases, however, the split decisions make the rights uncertain and leave them for resolution in the respective national forums.
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