Bad faith registration: It’s all about timing

Vudu, Inc. v. WhoisGuard, Inc. / K Blacklock

WIPO Case No. D2019-2247

15th November 2019

When a Complainant attempts to claim a domain name, it must prove that the Respondent registered the domain name in bad faith. In this case, Vudu Inc. failed to do so because its VUDU trademark was registered long after the disputed domain name (vudo.com) was registered. Bringing a UDRP claim in these circumstances gives rise to the risk that the Complainant is engaging in reverse domain name hijacking. In this case, the panel found that it was. So not only was Vudu Inc. unsuccessful in claiming vudo.com but it was found to have abused UDRP processes.

This tells us about the importance of timing when it comes to registration. Vudu found itself in a worse position than it would be had it not brought the claim at all. It seems that their error would have been avoided if the importance of timing was properly considered.

Where did Vudu go wrong?

Vudu was incorporated in 2005 (now owned by Walmart) and their VUDU trademark was registered in late 2007 whereas vudo.com was registered in 1999. Whilst the test for confusing similarity was satisfied, there is no possibility that the Respondent was aware of the Vudu or its activity at the time, negating the allegation of bad faith. Nonetheless, Vudu persisted by claiming that the particular way in which the website was being used amounted to a bad faith purpose of registration. The domain name was being used as a website for pay-per-click advertising links which seemed to rely on diverting web traffic to make a profit. The respondent claims that it was not relying on the trademark value of the domain name to do so, but rather was holding the domain name for its generic value with an intention to develop it or sell it later on.

The domain name in this case was likely registered due to ints generic value: being its similarity to the word "voodoo"

Distinguishing between generic value and trademark value

When a domain name is used as a pay-per-click or undeveloped website, panels will analyse the Respondent’s intentions and the popularity of the relevant trademark so as to discover the likelihood that the domain name is held for its trademark value of merely its generic value – in this case “voodoo”, referring to ritual magic. If one party can show that the other party registered the domain name in order to leverage the value of their opponent’s trademark, that will suffice to prove bad faith. But the key concern still is the intention at the time of registration, not subsequent intentions. Because the trademark did not exist at the time of registering vudo.com the Complainant could not say that the registration was motivated by the trademark value.

A note on supplemental filings

In limited circumstances parties can submit supplemental filings. These might be used to respond to unanticipated arguments or present important new evidence which has come to light since the initial submissions. Panels retain a discretion to disregard supplemental filings in the interest of expediency given that they usually cause procedural delay. In this case both parties made supplemental filings which were disregarded because they merely emphasised points already made in the initial submission or presented evidence which was not material to the outcome. Submissions of this sort should not be filed because they will win no favour with a panel and might cause undue delay. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6 for details.