This post is written by Andrew Sykes.
Domain Times has always welcomed commentary from practitioners in the domain name field. Today we feature a piece by Melbourne barrister Andrew Sykes on the vexed subject of proving bad faith, never as easy as it looks. Thank you Andrew!
A reminder to other practitioners: do think about writing a short article for Domain Times on any aspect of the arbitration process- or in fact anything to do with domain names.
Barrister & TM Attorney
The requirement that a domain name be registered and used in bad faith is, on its face, a simple one under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). Paragraph 4(b) of the UDRP even sets out examples of scenarios that may satisfy the requirement being:
Circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or services mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
Registering the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
Registering the domain name primarily for the purpose of disrupting the business of a competitor; or
Using the domain name in an attempt to intentionally attract, for commercial gain, internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.
However there are unique difficulties in assessing “bad faith” on the part of a registrant in some location in the world which is thousands of miles from the complainant’s main place of business. The difficulties are quite different from those faced in trade mark disputes contained within one jurisdiction. These difficulties faced by arbitrators of UDRP disputes are ones which parties and their representatives must keep in mind. Especially when such parties and representatives are more accustomed to domestic trade mark and brand disputes.
The bad faith requirement is not one which can be simply glanced over. It is not the case, for example, that an owner of a trade mark registration in the US can assume bad faith if a registrant in France incorporates its registered trade mark in a domain name registration without some further evidence.
The bad faith requirement has, unsurprisingly, been applied differently by UDRP panellists from different backgrounds. However the following observations are consistent amongst fair application of the policy:
The assessment of bad faith ought to take into account the specific circumstances of the registrant based on their location.
Despite the fact that such specific circumstances must be taken into account, ultimately the assessment is an objective one. Namely, would the reasonable person from the registrant’s country acting in good faith decide not to register and use the domain name in the manner that the registrant did? This objective standard is evidenced by the examples in paragraph 4(b) of the UDRP. Such examples set out fact scenarios which, objectively, are assessed as examples of conduct that a person acting in good faith would not engage in. Hence a finding of bad faith can be made regardless of what the registrant subjectively thinks of their own conduct.
Given the assessment is an objective one actual dishonesty does not need to be established. In fact, in many domain name disputes where no response is filed it will be impossible for a panellist to find that a registrant acted with subjective dishonesty.
There are a number of decisions which evidence the above. Below is a very small sample of such decisions involving specific scenarios that have led to finding of bad faith:
The act of offering a domain name for sale was deemed bad faith in Educational Testing Service v. TOEFL (WIPO Case No. D2000-0044)
Constructive knowledge was applied to deem bad faith where the registrant lived in a jurisdiction that supported such a principle in The Sportsmans Guide Inc v. Modern Ltd, Cayman Islands (WIPO Case No. D2003-0305).
‘Wilful blindness’ sufficed to establish bad faith in mVisible Technologies Inv. V. Navigation Catalyst Systems Inc. (WIPO Case No. D2007-1141).
However the trap that can occur for Complainants in UDRP proceedings is for them to assume that because actual subjective dishonesty does not need to be proven evidencing bad faith is easy. An objective finding of bad faith is still a serious one which impugns the character of the registrant. It may not brand he or she dishonest, but it does brand them as failing to act in accordance with the proper standards of a person in their shoes motivated by good faith. Such a finding ought to be supported by cogent evidence.
The following tips are useful for Complainants to keep in mind:
Always provide dated screenshots, emails or other visible evidence of the actual alleged bad faith use of the domain name. In most situations panellists require more than bare statements from witnesses. They want to see physical evidence.
Consider possible good faith motives, for example is the domain name used for a not-for-profit fan site? However beware that not all such usage may be in good faith. If good faith motives are apparent do they tell the whole story or does the registrant, in truth, acquire a benefit from the bad faith use and registration of the domain name?
Are archived screenshots taken via a tool such as the Wayback Machine relevant?
Does a registrant search reveal if the registrant has a history of registering domain names containing other parties’ trade marks?
Dates matter. Do the dates of the registrant records, acquisition of trade mark rights by the Complainant and alleged bad faith use all support a finding of bad faith?
The benefit of internet related disputes in acquiring proper evidence is that there are sufficient tools available for the diligent complainant to prepare their case properly. If bad faith can be established then there is little stopping such a diligent party from providing sufficient evidence to meet the objective standard required.
 See for example Williams Electronic Games Inc. v. Ventura Domains (WIPO Case No. D2005-0822) where the panellist found that even if the principle of constructive knowledge (one which is known to U.S. law) applied to the UDRP (which the panellist did not concede) it ought not apply to the question of bad faith when only the Complainant was from the U.S. but the registrant was from Sweden.