UDRP Spotlight: UDRP Decisions Citing Bad Faith

For those following the politics of both medical and fully legalized marijuana, 2013 and 2014 were years of tectonic change.  On New Years Day of 2014, the U.S. state of Colorado decriminalized the sale and consumption of limited quantities of the plant; this resulted in worldwide publicity and an influx of millions of dollars to the state’s economy.  The state of Washington followed suit later that year.  Whenever there’s a movement this big you can bet that domain cybersquatting will quickly follow.

And so, in February of 2015, the domain marlborobud.com was registered by a man in Vancouver, British Columbia.  His use of the word “bud” after the well-known Marlboro brand was not meant to indicate that he was personal friends with the Marlboro Man or that he enjoyed a Budweiser beer along with his cigarettes. Rather, the Respondent stated that he is associated with an organization that has signed paperwork with the Vancouver government to operate a not-for-profit dispensary of medical marijuana. He claims that he registered the domain name to offer future medical marijuana products from Philip Morris, the owner of the Marlboro trademark, through his dispensaries.

Looking Back at Precedent in UDRP Decisions

At the time Philip Morris filed its UDRP complaint, there was no website resolving from the marlborobud.com domain but this is not an uncommon situation and is also not a bar to winning a UDRP complaint against a domain.

Under the third UDRP element, a non-resolving website might not seem like it clearly indicates bad faith registration and use of a trademark.  However, when viewed in combination with all the other circumstances of the case, it very well might.  I’ve won many cases where a famous brand was copied but the website was blank.  Under a line of decisions going back to the very early days of the UDRP, panels have held that bad faith may be shown by the respondent’s passive holding of the domain. When a famous brand is copied but there’s no website, this theory assumes that the domain was registered by the respondent in the hopes that, at some point in the future, the domain will become valuable.  Either they’ll be able to use it for some commercial venture or, even better, the brand owner will someday make an offer to buy the domain for a significant sum of money.

However, in this case, all the Respondent got for his marlborobud.com domain was a handful of smoke.  The Respondent, himself, said that he is holding the domain until the Complainant commences offering medical marijuana for sale at which time he hopes to set up a website offering medical marijuana for sale under the MARLBORO trademark.  Finding that this intention for the domain shows bad faith, the Panel held that “the Respondent is holding the Domain Name with the intention, should the Complainant ever commence the sale of medicinal marijuana under the MARLBORO Mark of … attempt[ing] to sell, rent, or otherwise transfer the Domain Name’ registration to the Complainant.”

What if the Respondent Tried Some Smoke and Mirrors?

In my experience, even if the Respondent hadn’t admitted his intended use of the domain, the Complainant still would have prevailed.  Once a good case is made to support the bad faith claim, the burden shifts to the respondent to defend and explain why its actions were not bad.  In most cases, the respondent either defaults or comes up with some far-fetched story to explain itself (see the Dunkin.menu case) but this is often rather transparent and recognized as such by Panels.

So, if you’re the owner of a famous trademark which has been squatted upon in a domain name but there’s no website or just a registrar parking page, don’t despair.  With the right evidence, arguments, and case citations you too can win a complaint and have the domain transferred to you.