Recent Case Notes & Commentary

Another View on Sporto: Is There a Need Both for Bad Faith Registration and Bad Faith Use?

BioClin B.V v. MG USA, (WIPO case no. D2010-0046) is another example of the reluctance by a panel to accept the proposed new interpretation of the requirement in Paragraph 4(a) (iii) that to be successful a Complainant must prove both that the domain name in question was registered in bad faith and also that it was used in bad faith. It will be recalled that such in substance is the wording of the Policy itself and that one of the earliest UDRP decisions, Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO case no. D2000-0003)adopted that interpretation of the provision.


However, some recent debate has suggested that both elements need not necessarily be present and that it may be sufficient to prove bad faith use. This debate in turn has produced its own array of proponents and detractors.


The panellist in BioClin B.V v. MG USA summed up the development in the cases in the following way:

In 2009, there was a new development. A number of panel decisions held that, once a complainant had proved use falling within paragraph 4(b) (iv) of the Policy, the complainant was not in all circumstances necessarily required to prove that the respondent had acted in bad faith in registering the disputed domain name (even if the registration had occurred many years prior to the proved bad faith use). The new cases included Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO D2009-0786, City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO D2009-0643, Ville de Paris v. Jeff Walter, WIPO D2009-1278, and Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276.


In the Ville de Paris case, the (eminent) panelist summarized his views on this issue in the following terms:

“… 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 Corporation Limited v Nuclear Marshmallows, supra] 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’.”


In Torus Insurance Holdings Limited v. Torus Computer Resources, (WIPO case no. D2009-1455),… the Panel declined to follow the Octogen line of cases.


Since the Torus decision, several panels have expressed their views on the issue. At least one has followed the Octogen line – Samsung Electronics Co., Ltd v. Pimser Electronics Ltd. (Samsung Turkey), (WIPO case no. D2009-1630). Others have come to the same conclusion this Panel inclined to in the Torus case – see Validas, LLC v. SMVS Consultancy Private Limited, (WIPO case no. D2009-1413) and Camon S.p.A. v. Intelli-Pet, LLC, (WIPO case no. D2009-1716). The reasoning in the Validas case particularly commends itself to this Panel. The panel in Validas, while noting the “laudable desire” of some panels to provide a remedy in cases of good faith registration followed by bad faith use, concluded that the only permissible way for a remedy to be provided in such circumstances would be for ICANN to amend the Policy, paragraph 4(a)(iii), by changing “and” into “or”. This Panel agrees with that conclusion, and sees no need to depart from the view it expressed provisionally in the Torus case.”


BioClin B.V v. MG USA may therefore be seen as another endorsement of the traditional view.


A further refinement was offered by BioClin B.V v. MG USA in that it also doubted the veracity of Eastman Sporto Group LLC v. Jim and Kenny, (WIPO case no. D2009-1688) which said (as it was put in BioClin B.V v. MG USA, that) “the perceived problem of good faith registration followed by bad faith use could be met by treating each renewal of the disputed domain name as a new registration for the purposes of paragraph 4(a)(iii) of the Policy.”


BioClin B.V v. MG USA was not attracted to this view and said so in the following words:

“It seems to this Panel that there are difficulties with the interpretation adopted by the panel in Eastman Sporto, not least that paragraph 2 of the Policy appears to treat registration and renewal of a domain name as separate and distinct concepts. And the Panel is not sure where the adoption of the approach applied in Eastman Sporto might lead – for example, would a respondent’s previous bad faith use be “cured” if a complainant could not prove that the respondent acted in bad faith at renewal time? Numerous “registrations” by the same registrant is a difficult concept, which would bring with it a new set of interpretation problems. But the major problem this Panel sees with the “renewal theory” is that, like the approach adopted by the panels in the Octogen line of cases, it seeks to provide a remedy in circumstances where the framers of the Policy appear to have intended that there should be none. To this Panel it seems that, if the intention of the framers of the Policy was that subsequent bad faith use of a domain name which had been registered in good faith was not to be caught by the Policy (as appears to this Panel to have been the case), an interpretation of the Policy which would eventually catch all such registrants (when they renewed their registrations) is to be avoided. Given the clear intention expressed in the Second Staff Report (paragraph 1 above), it seems to the Panel that the bad faith registration requirement was intended to catch a respondent’s bad faith in the choice of the disputed domain name. That choice is of course made at the time of the original registration or acquisition, not at renewal time.”


As the panellist pointed out, perhaps there is no solution to this problem for it was not intended that there would be one. Such a conclusion, some might also say, reinforces the notion that the Policy, like all statutory and similar instruments, should be interpreted to mean exactly what it says, if it is clear. Indeed, some might also say: is there a problem?


Conclusion

The general propositions discussed by the panellist turned out to be important for the result of the case. As it was necessary to prove bad faith registration and as it could not be proved, the case failed and the Complaint was dismissed.