For the 14 years of the UDRP’s existence it has generally been accepted that a complaining brand owner must prove the responding domain owner registered or acquired the domain in bad faith (with an intent to infringe on the brand) at the time the owner acquired the domain. This is because Par. 4(a)(iii) of the UDRP requires complainants to show that the domain “has been registered and is being used in bad faith.”
In hundreds of decisions complainants have been denied relief because they were unable to show that the domain, although currently being used in bad faith, was not registered or acquired as such. This can be because the brand didn’t exist at the time the domain was registered (how can you infringe a mark that doesn’t yet exist?) or because the respondent initially had a good faith use for the domain but then changed its use over time so that it eventually infringed on the brand.
A recent UDRP decision concerning the domain Big5.com continues an emerging trend of panelists looking at bad faith, not only at the time the domain was first registered or acquired by the respondent, but also at the time the domain was renewed.
In this case, the respondent first registered his domain in 1998 and obtained a trademark registration for BIG5 in his home country of Taiwan for the purpose of helping Chinese-speaking Internet users get to their desired websites.
In 2002, the respondent stopped providing that service and later signed up with the Amazon “aStore” to earn revenue from the sale of the complainant’s BIG5 branded sporting goods. The panel found that the respondent had a legitimate interest in his domain, acted in good faith when it was first registered in 1998, but changed the domain’s use, and was now infringing on the Complainant’s brand.
The panel looked at Par. 2 of the UDRP, which states that when domain name owners register or renew a domain they “represent and warrant” that it does not infringe on the legal rights of others, such as a brand owner. Relying on this paragraph, the panel concluded that, even if the domain was originally registered in good faith, “the elements of the Policy can be studied at the time of the registration or at the time of the renewal….”
This satisfies the long-held desire of brand owners to use the UDRP to enforce their trademarks in situations where use of a domain has turned from good to bad. But it raises the question of what the drafters of the UDRP intended by also requiring proof that a domain “has been registered and is being used in bad faith.”
If the Big5.com panel’s conclusions are applied in other cases, could its interpretation lead to odd situations where a domain can flip back-and-forth between good and bad faith depending on how it is being used at the time of its most recent renewal?
And, if we accept the panel’s view in the Big5.com case, then what exactly is the purpose of the word “and” in Par. 4(a)(iii), since it seems that, for all practical purposes, use would really be the only relevant factor when considering bad faith (unless, under the Big5.com panelist’s interpretation, a complaint is filed prematurely such as when the use has turned bad but the domain is not yet due for its next renewal).
If a domain transitions to bad faith use, and that is considered sufficient grounds to order a transfer under the UDRP after a renewal, then why bother looking at the merely technical act of renewal at all? Also, the Big5.com panel implicitly says that the word “registered” in Par. 4(a)(iii) can also be interpreted to mean “renewed.” However, since Par. 2 uses the terms “register” and “renew” to mean two separate things, it seems wrong to interpret use of the word “registered” in Par. 4(a)(iii) to also mean “renewed.”
On the other hand, if the Big5.com panel’s reasoning is flawed, then what is the relevance of Par. 2 of the UDRP? Is it merely a private matter between the domain owner and its registrar for violation of terms?
Rather than letting Panelists settle these thorny issues, these inconsistencies should be a matter for those seeking to amend the language of the UDRP itself after a full and open debate (after all, the thing is almost 15 years old and could use some renovation!). Perhaps it’s time to change “and” to “or” as it is used in the dispute policies of certain other country-code domains.
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